Manisha Reddy
Loyola University Chicago School of Law, J.D. 2019
Associate Editor
In 2014, in the District Court of Arizona, a judge ruled that “Google” was not a generic term and was eligible to receive trademark protection in Elliott v. Google. On appeal, the Ninth Circuit affirmed the district court’s ruling. In 2011, Forbes estimated that the “Google” trademark was worth $113 Billion; the trademark is worth more now in 2018 and the company’s trademark is likely its most valuable asset. The suit first ensued when Elliott purchased over 700 domain names with the word “Google” and after the company had successfully won a name dispute, Elliott filed to cancel “Google” trademarks. Elliott claimed that Google was a generic term and should not receive trademark protection. The Ninth Circuit’s ruling in this case will most definitely affect companies and entrepreneurs of all sizes, perhaps giving companies more protection than they were afforded in the past; what some are calling an unintended consequence.
Genericide
USPTO trademark protection affords trademarks (“marks”) such as different words and logos association with a product source. A trademark becomes generic when: “1) its use has been discontinued for three years with intent not to resume such use; or (2) when the mark becomes the generic name for the goods or services on or in connection with which it is used.” A generic term is known as the antithesis of a mark. Once a mark is deemed generic it is considered to be in the public domain; it is available for use by anyone and any company without any consequences. When a product’s name or logo becomes associated with a “class of goods” and not a specific product the trademark is considered to be generic and has lost trademark protection. Trademarks such as “aspirin”, “escalator”, and “yo-yo” have all gone generic, while marks like “Xerox” and “Kleenex” are on the verge of becoming generic. Aspirin is a trademark of Bayer AG, but for most of the world Aspirin is synonymous with pain reliever, because of this societal transformation of the word “Aspirin” the mark has now become generic.
Case
In the District Court of Arizona decision, the court defined “Google” to have four possible meanings: “ (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.” While many thought Elliott’s argument that Google has reached genericide status would mean that Google would no longer be afforded trademark protection, they were shocked when the court ruled in Google’s favor and found that term was indeed not generic. The court reasoned that even if customers use the word “Google” to refer to any online search engine, Google the company still has the trademark “if consumers associate the noun with just one search engine.” The District Court of Arizona’s second reason for their decision was that Elliott’s information about consumer knowledge and understanding of Google was incorrect and not well researched. The court found that Google’s more extensive customer survey was more reliable than Elliotts’; Google’s survey indicated that 94% of customers identified Google with a search engine and only 5% of customers identified the mark as a common word. If the survey had shown that more customers identified the mark as a common word, then it is more likely that the court would have found the mark to be generic. The court ultimately concluded, “verb use does not automatically constitute generic use.” This conclusion completely made Elliott’s argument irrelevant; in his concurrence Judge Watford said that “the plaintiffs produced thousands of pages of largely irrelevant evidence showing merely that ‘Google’ is sometimes used as a verb.”
Implications
The Ninth Circuit Court of Appeals ruling has many companies and attorneys reeling; this decision could change the future of trademarks and ownership of marks. Many companies and business owners aspire for their mark to become generic; a generic mark means that they have made it big. Unfortunately, when a mark reaches generic status that also means that the company and owner lose control over the name, and third-party competitors and developers can do as they please with the mark without consequence. Other big brands like Google have reason to support and endorse this ruling because it means that their marks will likely be protected after a federal court supported one of the largest, if not the largest mark in the world. Some argue that this ruling is only temporary and as time goes on “Google” will indeed become a verb and that the future of their trademark protection for big companies is still uncertain.