Mr. Chris Gillespie must have thought he had a brilliant idea when he registered multiple domain names that included the term “Google,” such as “googledisney.com,” “googleBarackObama.net,” “Googlenewtvs.com” and others. Did he truly believe that Google would not sue him?   Or was this part of a grander scheme?  Think about the implications of provoking Google to sue you! Wow!  Well, that’s what happened. Google sued Mr. Gillespie before the National Arbitration Forum on grounds that his domain names were confusingly similar to Google’s trademark and that Mr. Gillespie registered them in bad faith.  Google prevailed and Mr. Gillespie was ordered to transfer his domain names to Google.

Sounds simple but the matter did not end there. Mr. Gillespie joined forces with a David Elliott to sue Google in the Federal District Court for the District of Arizona in which they petitioned the court to cancel the Google trademark because GOOGLE had become generic. That is, it no longer stood to identify the original product for which it was registered.

Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, ASPIRIN, CELLOPHANE, and THERMOS once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods. But the public appropriated those marks and are primarily understands aspirin, cellophane and thermos engineered names for those same products.

Elliot v. Google, No. 15-15809 (U.S. Court of Appeals for the Ninth Circuit, May 16, 2017).  Gillespie and Elliott argued that the term “google” had become understood as a “generic term universally used to describe the act of Internet searching” and, therefore, the registration should be canceled.  The district court didn’t buy the idea and dismissed the case on summary judgment, agreeing with Google that the defendants had failed to present sufficient evidence that the “public primarily understands the word “Google” is a generic name for Internet search engines.”

Undeterred, the plaintiffs appealed the decision to the Ninth Circuit Court of Appeals where they argued that there was sufficient evidence to create a triable issue of fact as to whether the term “google” is generic. The Court disagreed and held that plaintiff’s’ argument was flawed for two reasons: first, genericide must relate to a particular type of good or service and, second, the plaintiffs erroneously assume that using a trademark as a verb (to “google”) — not an adjective — automatically constitutes generic use. In the first instance, the court is saying that the “act” of searching does not describe the product or service for which GOOGLE had been registered. GOOGLE was registered for “search engines” not for the act of searching. Second, the plaintiffs’ semantic argument contradicts the fundamental principles of trademark law. Trademarks are “source identifiers.” To understand whether a trademark is being used as a source identifier the law provides that the jury or court must determine what the user was thinking or whether they had a particular source in mind. In the court’s words, if the plaintiffs were correct “that a trademark can only perform its source-identifying function when it is used as an adjective, then we would not have cited the need for evidence regarding the customer’s inner thought processes.”  So, the Ninth Circuit affirmed the lower court’s decision and tossed the appeal.

If you’re interested in the details of this reasoning, click here to see the full opinion. If you need help protecting your trademarks contact the lawyers at Lipton Weinberger and Husick.