Written by: Karl Braun, Esq. and Larry Cheng
The United States Court of Appeals for the Ninth Circuit recently considered whether the Google name should continue to receive trademark protection. Specifically, the Ninth Circuit examined whether the term “google” had become generic.
In 2012, Chris Gillespie acquired 763 domain names that included the term “google.” For example, Gillespie registered for domain names such as “googledisney.com,” “googlebarackobama.net,” and “googlenewtvs.com.” Google, Inc. (“Google”) opposed Gillespie’s registrations and filed a complaint with the National Arbitration Forum (“NAF”). The NAF agreed with Google’s argument that Gillespie’s domain names were confusingly similar to the Google trademark. Accordingly, the domain names were transferred to Google.
Gillespie, joined by David Elliott (“the challengers”), filed an action in the Arizona District Court seeking cancellation of the Google trademark pursuant to the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a “generic name for the goods or services, or a portion thereof, for which it is registered.” 15 U.S.C. § 1064(3). The challengers argued that “google” had become a generic germ universally used to describe the act of internet searching.
Based on the challengers’ argument, the Ninth Circuit considered whether the term “google” had become a “victim of genericide.” Genericide occurs when the public uses a trademarked term as a generic, blanket term to refer to all goods or services that are similar, regardless of its source. Once a trademark falls victim to genericide, that trademark no longer enjoys trademark protection. The court identified “aspirin,” “cellophane,” and “escalator” as victims of genericide.
The Ninth Circuit broke down the semantic requirements of genericide by clarifying that genericide relates only to a particular type of good or service. This requirement is clear from the text of § 1064(3) of the Lanham Act, which allows a party to apply for cancellation of a trademark when it “becomes the generic name for the goods or services . . . for which it is registered.” Alternatively stated, genericide relates to nouns not verbs. The Ninth Circuit used this rationale to find in favor of Google because the challengers’ argument for cancellation was fundamentally flawed as it was based on the act of searching the internet, not the good or service that Google provides through its internet search engine. The Ninth Circuit also found that the challengers could not show that there is no alternative way to describe internet search engines without referring to all other internet search engines as “google.” The court noted that the general public was able to recognize and identify different internet search engines. Thus, the term “google” has not become generic.
Google now joins the likes of Coca-Cola as companies with iconic brand names that have successfully avoided genericide. The Ninth Circuit’s ruling that using a trademarked name as a verb does not qualify for a genericide claim appears to make it easier for the owners of other iconic brand names to protect their trademarks in the future.
Defending your trademark rights becomes more of a priority as your organization and brand continues to grow and as any associated trademark becomes increasingly recognizable. Our intellectual property attorneys understand the complexities involved with registering a trademark and protecting that trademark after its issuance. Accordingly, our intellectual property attorneys can develop a strategy catered to the specific needs and nuances of any situation, entity, or individual.