‘Google’ Not A Generic Term Yet, US Court Says

Googling may be a ubiquitous fact of life, but the company behind the term still has trademark rights, a US court has found.

In a 10 September cybersquatting decision in the US district court for Arizona, online search company Google successfully defended its trademarks on the internet, demonstrating that at least so far, consumers using the verb “to google” are not confusing the company with its competitors.

The decision is available here [pdf].

“[E]ven if a mark qua verb is used exclusively in the indiscriminate sense, the mark is not generic if a majority of the consuming public nevertheless uses the mark qua mark to differentiate one particular product or service from those offered by competitors,” the decision states.

“It is thus contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark — cultivated by diligent marketing, enforcement, and quality control — has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs,” it said.

According to the decision, plaintiffs David Elliott and Chris Gillespie, during a two-week span ending on 10 March 2012, registered 763 domain names combining the word “google” with: another brand, such as googledisney.com, a person, e.g., googlebarackobama.net, a place, e.g., googlemexicocity.com, or with some generic term, e.g., googlenewtvs.com.

The Google company promptly challenged these under the Uniform Domain Name Dispute Resolution Policy (UDRP) based on its two trademarks. Gillespie argued that the term has become generic and can be used. There is plenty of precedent for brand names becoming generic after their use among consumers goes beyond a reference to the original company.

But the UDRP panel transferred the domain names to Google, saying they were confusingly similar, that Gillespie had no rights or legitimate interests in the names, and that they were registered in bad faith.

Gillespie then filed this case to cancel Google’s trademarks based on them having become generic.

But the court clarified that: “The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general. The ‘502 and ‘075 marks [Google’s trademarks] are subject to cancellation only if the fourth meaning is the primary significance of the word google to a majority of the consuming public.”

“Plaintiffs needed to submit significantly probative evidence that the primary significance of the word google to a majority of the consuming public was a common descriptive term for search engines,” it said, which they failed to do.