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18 August 2017Trademarks

SCOTUS asked to consider whether ‘Google’ trademark is generic

Two men are trying to take a case to the US Supreme Court to prove that Google has become a generic term that can’t be protected under trademark law.

The plaintiffs, David Elliott and Christopher Gillespie, filed a petition for a writ of certiorari to review a decision made by the US Court of Appeals for the Ninth Circuit in May this year.

The US Supreme Court has been asked to revive the claim that the widespread use of “google” as a verb meaning “to search the internet”, without regard to which search engine is used, means the mark has become generic.

Elliott and Gillespie had registered domains which combine the word “google” with another term, but Google used the Uniform Domain-Name Dispute-Resolution Policy to have the domains transferred to the company.

In July 2012, the petitioners filed their first amended complaint for cancellation of Google’s trademark registrations, US numbers 2,806,075 and 2,884,502 for the mark ‘Google’.

They also sought a declaration that the ‘Google’ mark has become generic and/or that petitioners’ use of the verb “google” in their domain names constituted fair (non-trademark) use.

Google hit back, filing a counterclaim that alleged trademark dilution, cybersquatting, unjust enrichment, unfair competition and false advertising.

Both parties filed motions for summary judgement on the issue of genericide in September 2013.

Google’s motion was granted by the US District Court for the District of Arizona in September the following year. The parties agreed to dismiss the remaining claims.

In April 2015, Elliott and Gillespie filed a notice of appeal to the Ninth Circuit.

Just over one year later, the Ninth Circuit issued its opinion, backing Google and finding that the plaintiffs’ evidence was “insufficient to establish that the primary significance of the word ‘google’ to the relevant public was as a generic name”.

Elliott and Gillespie have asked the Supreme Court to consider whether the Ninth Circuit erred in respect of three issues.

First, they said, the court was wrong by holding that indiscriminate use of “google” as a verb to mean “to search on the internet, regardless of what search engine is used” was “completely irrelevant” to whether the mark is still valid.

Second, by finding that the statutory test for genericness (what is the “primary significance” of the mark to the relevant public) should be “interpreted as a test for majority understanding rather than as a test for majority usage”, the court was wrong, the plaintiffs said.

Third, they objected to the court’s weighing and discounting as irrelevant the evidence of the genericness of the word.

The petition was announced through a press release filed by the plaintiffs’ law firms Wirtz Law APC and TD Foster IP Law, yesterday.

Richard Wirtz, founder of Wirtz Law APC, said: “Our hope is that the high court will recognise what the lower court did not: that outdated precedent cannot be stretched to fit the entirely new issue of verbing trademarks.”

He added that the Lanham Act draws a “careful balance between free speech rights and the rights of business owners”.

According to Wirtz, the Ninth Circuit’s decision disturbed that balance in favour of business owners and to the detriment of the public.

“We hope that the high court will step in and restore that balance,” he said.

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More on this story

Trademarks
29 August 2017   Google’s trademark should not be deemed a generic term for searching the internet, according to 66% of respondents to WIPR’s latest survey.
Trademarks
17 October 2017   Google may have breathed a sigh of relief as the US Supreme Court refused to hear claims that the company’s trademark has become generic.