Court Finds ‘Google’ is Not Generic

GoogleThe Ninth Circuit Court of Appeals ruled on May 16, 2017, that Google has not become a victim of its own success – that is, its Google trademark is still an enforceable brand for an online search engine and has not become generic.

Xerox, dumpster, Kleenex, thermos.  All are infamous examples of company’s trademarks nearly becoming a victim of their own widespread success.  When a trademark becomes so ubiquitous and so widely used by the general public as a noun or verb instead of as a brand (adjective) of goods or services, it becomes a generic term.  When that happens, the term ceases to be a source identifier and is just another word in the English lexicon.

Many experts believed that Google may be the next famous term to lose its trademark protection, simply by becoming too popular a term.  All too often, consumers use the mark generically, for example by saying they “Google something” or “check Google.”  Such references are against the intentions of a brand owner and can have a devastating effect on a brand.

This becomes a problem for companies trying to protect their trademark rights because marks which are merely generic are not subject to trademark protection. Generic terms are those which include “[w]ords which embrace an entire class of products or services, not all of which necessarily emanate from the same source ….” Team Cent. Inc. v. Xerox Corp., 606 F. Supp. 1408, 1413 (D. Minn. 1985) (internal citations omitted).

This follows from the “spectrum” of the strength of one’s trademark, which is divided into five levels of decreasing strength:

  1. Arbitrary marks, which have no meaning as to the nature of the product
  2. “Fanciful” or “coined” marks, which are original and have little if any reference to the nature of the product or service
  3. “Suggestive” marks, which have a primary trademark significance but with suggestion as to nature of product
  4. “Descriptive” marks, which are not just suggesting, but actually describing the product or service yet still understood as indicating source
  5. And “Merely descriptive” marks, which have almost entirely reference to the product or service but capable of becoming “distinctive”.

See Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976); see also Alchemy II, Inc. v. Yes! Entm’t Corp., 844 F. Supp. 560, 569 (C.D. Cal. 1994). Companies, essentially, do not want their marks to ever become “merely descriptive.”

A common source of evidence on genericness is the dictionary. Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901 (7th Cir.1983). For instance, the court in Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978), relied heavily upon the dictionary to find that “light” or “lite”, was a generic term in relation to low-calorie beer. See 561 F.2d at 80–81. The Miller court also noted that the court is entitled to take judicial notice of common usage of the English language to determine whether a use is generic. Id.

Where a trademark is used generically, a trademark owner may need to take aggressive measures to retain exclusive rights to the trademark. Xerox corporation attempted to prevent the genericization of its core trademark through an extensive public relations campaign advising consumers to “photocopy” instead of “xerox” documents.

Google seemed to recognize this dilemma instinctively, and attempted, long ago, to take preliminary steps to ensure its success would not be its undoing.  Google has gone to lengths to prevent this process, discouraging publications from using the term ‘googling’ in reference to Web searches, and going so far as to send cease and desist letters on the same as far back as 2003.  See Google calls in the ‘language police’ on BBC News.

These early actions have paid dividends.  In 2006, both the Oxford English Dictionary and the Merriam-Webster Collegiate Dictionary made efforts to strike out the difference between the noun “google” and the verb “to google” by defining google (all lower case, with -le ending) as a verb meaning “use the Google search engine to obtain information on the Internet”.  The company, however, continued to have the proper noun treatment of capital “G” for “Google.”

This has proven helpful, as one district court in Elliot v. Google Inc., (“Elliot”) 45 F. Supp. 3d 1156 (D. Ariz. 2014), closely examined the dictionary usage of the various terms for “google”:

As to dictionary usage, Plaintiffs are unable to cite to a single dictionary whose definition of the word “google” neglects to mention the trademark significance of the term. Plaintiffs accuse Defendant of “intimidat[ing] [dictionaries] into submission”, because Defendant enforces its mark.

Elliot, 45 F. Supp. 3d at 1171 (internal citations omitted).  The court further held that verb use of a trademark “is not fundamentally incapable of identifying a producer or denoting source. A mark can be used as a verb in a discriminate sense so as to refer to an activity with a particular product or service,” using Adobe Photoshop as an example, e.g., to “PHOTOSHOP” an image. Id.

The lower Court’s decision was upheld last week.  Judge Tallman wrote in his decision that:

[The case] has failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word ‘google’ as a generic name for internet search engines and not as a mark identifying the Google search engine in particular.

Thus, Google successfully argued, for now, that it owns a trademark for the search engine itself, not the act of searching. The fact that people might offer “to FedEx a package” doesn’t mean consumers can’t understand the difference between Federal Express and UPS, Google said, and the same is true for search engines.

Aside from working directly with dictionaries, another common practice among trademark owners is to follow their trademark with the generic product or service word (e.g., referring to the “Google search engine”) to help define the word as a trademark.

Yet, it remains to be seen whether mere public relations programs or discussions with dictionaries can stop the evolution of the public’s use of language.  Continued efforts are needed for Google, otherwise one day, “googling” oneself may refer to any old look-up of information, rather than specifically typing one’s name into a Google search bar on a web browser.

The Author

Jeffrey Kobulnick

Jeffrey Kobulnick is a parnter with Brutzkus Gubner Rozansky Seror Weber LLP. Jeff regularly litigates claims for copyright and trademark infringement, unfair competition, false advertising and related claims under both federal and state laws. He also has significant experience handling Internet-related intellectual property issues, such as domain name registration and dispute resolution, and the protection and enforcement of copyrights and trademarks on the Internet. In addition, Jeff extensively counsels and represents clients on the selection, clearance and registration of trademarks and service marks worldwide. For more information, or to contact Jeff, please visit his firm profile page.

Jeffrey Kobulnick

Joseph Rothberg is an attorney with Brutzkus Gubner Rozansky Seror Weber LLP. Joe supports a number of the Firm’s attorneys on matters ranging from the representation of chapter 7 Trustees in both individual and corporate cases to high profile apparel industry matters. Before joining Brutzkus Gubner, Joe worked on products liability and mass tort claims for a small Los Angeles Firm. For more information, or to contact Joe, please visit his firm profile page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Anon May 20, 2017 10:23 am

    The decision seems flawed – in comparing the use of the trademark as a generic verb, “Googling” something is far more ubiquitous than “Xeroxing” ever was.

    Perhaps the judgement reflects more a p00r showing of counsel than a reflection of reality.

    Then again, Coke remains a trademark even though the entire South of the U.S. has used that word as a generic description for several generations now….

  2. Patent Investor May 20, 2017 11:10 am

    I agree anon. Seems to me that Google “heavy-handing” the dictionaries should have been easily used against Google. Why did Google feel the need? What would the dictionaries have done without such actions by Google and why?

  3. Benny May 21, 2017 5:53 am

    “failed to present sufficient evidence to support a..finding that the relevant public primarily understands the word ‘google’ as a generic name for internet search engines…”
    I consider that a gross over-estimation of the American voting public’s intelligence.
    I am reminded of a (non- USA) case where a judge concluded that the public would not be confused by two similar, but different, trademarks for manufacturers of kitchen utensils. This was not long after I myself was confused by the marks and erroneously assumed they were commonly owned.
    I am also reminded of a children’s TV program broadcast by the BBC in the 70’s where the presenter was not allowed to use the trademark term “sellotape” and famously confused parents and children alike by being the only person in the UK who created artwork using “sticky back plastic”.

  4. Gene Quinn May 21, 2017 2:37 pm

    It seems abundantly clear that Google has become generic and that the Ninth Circuit simply decided they were not going to declare that they had lost their trademark.

  5. Eric Berend May 22, 2017 9:47 pm

    “Har-har-hardy-har-har!”
    https://www.youtube.com/watch?v=5YztNYiZrzo
    – Immortal Philosopher ‘Ralph Kramden’, as portrayed by Jackie Gleason

    The Gold-plated SVP, IP aristocracy has decreed: IP protections against the intent of the law, just for us – and no IP protection for anyone else, even when it specifically expresses the intent of the law.

    For mere sallow corruption, long established property rights in the private and public good are carelessly abandoned, as the U.S. veers sharply towards the economic practices of so-called third world nations. The motivation towards IP protection enforcement is capriciously captive to the whims and interests of the Golden SVP: piracy for everyone else, special protections for them. Yet another sad day, indeed.

  6. Margaret Ryan May 31, 2017 5:49 am

    The position is better for owners of extremely famous and potentially generic marks in Australia where, for trade mark to be removed from the Trade Marks Register on the grounds that it has become generic, it must have become generic among the trade – ie used by a number of other traders generically. The fact that it is used by the public generically, such as to google something, is not relevant.