U.S. Ninth Circuit - The FindLaw 9th Circuit Court of Appeals Opinion Summaries Blog

'Google' Trademark Survives 'Genericide'

A federal appeals court ruled Google may keep its trademark for the name, despite claims that the word has come to mean "to search the internet."

The U.S. Ninth Circuit Court of Appeals said trademarked names can lose their proprietary meaning as they become generic terms. However, the court rejected an argument that "Google" is synonymous with search engine.

In Elliott v. Google, the court said the plaintiff had presented admissible evidence that "google" is used as a verb. But that does not prove it no longer means "Google," the company.

Google 'Genericide'

The court case started after David Elliott sued to cancel the Google trademark in 2012. Elliott claimed that "google" was a generic term used to describe the act of internet searching.

The parties filed cross-motions for summary judgment, focusing on the right legal test to determine whether a trademark has died by "genericide." It occurs when the public appropriates a trademark and uses it as a generic name for particular goods or services, regardless of its source.

The plaintiff said the trademark died because "google" had become a verb. The company said "Google" is a business name and not a term for all search engines.

The judge agreed with the company, and the appeals court firmed. "Google" is not the same as "aspirin," "cellophane," and "thermos," which were trademarked names that are now used generically to describe all products like the originals.

Primary Significance

The court said a trademark can be cancelled when it becomes the generic name for certain goods or services, but the same word can have also have different uses.

"We have already acknowledged that a customer might use the noun "coke" in an indiscriminate sense, with no particular cola beverage in mind; or in a discriminate sense, with a Coca-Cola beverage in mind," Judge Richard Tallman wrote for the panel. "In the same way, we now recognize that an internet user might use the verb "google" in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind."

Affirming the trial judge's ruling, the court said the plaintiff failed to present sufficient evidence that the 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.

Forbes, reporting on the decision, said "Google" is one of the most valuable trademarks in the world. The magazine reported its value at $44 billion in 2011, and a more recent estimate placed it at $113 billion.

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