Court Rules that Google Is Not a Victim of “Genericide”

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Aug 26, 2017

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GoogleAs Bloomberg reported, the Ninth Circuit has ruled that the GOOGLE trademark has not fallen victim to “genericide.”

“Genericide” is a term used when a former trademark has become so ubiquitous for a type of goods that it no longer identifies a particular manufacturer as the source of the goods.

Forbes has estimated that the GOOGLE mark is one of the most valuable trademarks in the world — worth an estimated $44 billion.

In fact, the GOOGLE trademark may be the Google company’s most single valuable asset.

Genericide

As Forbes notes,

Trademarks protect a word or logo’s ability to identify the associated product’s source. When a product’s name or logo becomes associated with its class of goods, instead of one specific product in the class of goods, we say that the word or logo has become “generic” and has permanently lost all trademark protection. Over the years, many great trademarks have become generic, such as escalator, aspirin and yo-yo. (Xerox and Kleenex are two trademarks that are probably still protected but have been teetering on the cusp of genericism for years).

The plaintiffs in the case had registered 763 domain names combining the term “Google” with some other word — such as “googledisney.com,” “googlebarackobama. net,” and “googlenewtvs.com.”

Cybersquatting

Google successfully challenged those registrations via the National Arbitration Forum (NAF) for violations of the Uniform Domain Name Dispute Resolution Policy.

Google argued that the plaintiffs had committed domain name infringement, which is often known as “cybersquatting.”

The NAF agreed and transferred the domain names to Google in 2012.

The plaintiffs then filed a lawsuit seeking to cancel two GOOGLE registered trademarks. 

They argued that the GOOGLE mark had become generic, because people use the verb “to google” to mean to look something up on the Internet — without regard to whether they use the Google search engine, Bing, or something else.

The Lanham Act, which governs trademarks, 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.”

The GOOGLE Brand

During the trial, Google introduced evidence that 94% of consumers identified GOOGLE as a brand name, and only 5% saw it as a common word referring to an internet search.

The trial court refused to cancel the marks and granted summary judgement to Google.

The plaintiffs appealed.

The Ninth Circuit noted that:

Over time, the holder of a valid trademark may become a “victim of ‘genericide.’” … 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 were 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 now primarily understands aspirin, cellophane, and thermos as generic names for those same goods. 

The court applied the “who-are-you/what-are-you” test:

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.  In sum, we ask whether “the primary significance of the term in the minds of the consuming public is [now] the product [and not] the producer.” 

The court then addressed a number of arguments and concluded that GOOGLE had not (yet) become generic.

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