‘Google’ a generic mark?

The process by which trademark rights of a given individual and firm are diminished or lost as a result of common use, forming part of public domain is known as genericization. As a result, the trademark can be commercially exploited by anyone. Words like Thermos, Realtor, Cello Tape etc. are the examples of trademarks that have become genericized all over the world.

Background

The Google trade mark dispute dates back to 2012 when an individual named Chris Gillespie registered 763 domain names combining the word ‘google’. In response Google filed a complaint under the Uniform Domain Name Dispute Resolution Policy, alleging cybersquatting and trademark infringement. The complaint was ruled in favour of Google.

After the ruling, Elliot (the intended third party beneficiary in the domains registered by Gillespie) sued Google in the U.S. District Court of Arizona for cancellation of google trademark, and declaration of plaintiff’s right to fair use of the word google – arguing that the term ‘google’ has become commonly known for searching the Internet and therefore, should be invalidated. The District Court also ruled in favour of Google stating that the plaintiffs failed to show that people use the word “google” to mean generic web searches and not just going to Google to conduct a search.

Elliot and Gillespie then moved the 9th U.S. Court of Appeal against the ruling in a bid to invalidate the trademark.

Ruling of Court of Appeal

The U.S. Court of Appeal ruled in favour of Google because it was of the view that people still relate the term ‘google’ with the company and think of it as a brand. It observed –

If the relevant public primarily understands a mark as describing “who” a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing “what” the particular good or service is, then the mark has become generic. […]Because not a single competitor calls its search engine “a google,” and because members of the consuming public recognize and refer to different “internet search engines,” Elliott has not shown that there is no available substitute for the word “google” as a generic term.

Present Suit in the U.S. Supreme Court

Elliot and Gillespie have appealed against the decision of 9th Circuit. The Supreme Court is yet to decide whether it will take up the case or not. Although it is very unlikely that the case will be taken up.

Siddhant Sharma

Siddhant is a Patent and Intellectual Property lawyer. He finds joy in exploring and writing about niche areas of law. He is finding better ways to describe the patent profession to a five-year old and a sixty-five year old.

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