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Federal Court: 'Google' Trademark Isn't a Generic Term

Apparently looking to make a quick buck (which is the best kind of buck), David Elliot and Chris Gillespie registered domain names using formulations of "Google" along with another well-known words or brand names, like googledisney.com and googlebarackobama.net. So, you know, legitimate business and not SEO tricks.

Google filed a complaint with the domain registrar. Then Elliot and Gillespie sued Google in federal court to have the company's trademarks to "Google" canceled on the ground that it's become a generic term.

Generic Marks

When a trademark becomes generic, the trademark can be canceled. "Cellophane," "linoleum," "heroin" and "videotape" have all suffered the same fate. In this case, Elliot and Gillespie argued that transforming "Google" into a verb for conducting an online search rendered it generic.

The court, however, disagreed: "It cannot be understated that a mark is not rendered generic merely because the mark serves a synecdochian 'dual function' of identifying a particular species of service while at the same time indicating the genus of services to which the species belongs."

Essentially, just because you can "Google" something with Bing, that doesn't mean that Google has lost its trademark. Applying the "primary significance" test, the question is whether a consumer still identifies the verbed trademark as a distinct product.

Google brought in an expert, Dr. Geoffrey Nunberg from the UC Berkeley School of Information (and frequent contributor to WHYY radio's "Fresh Air"), to explain that "'go Google it' is not necessarily shorthand for 'look it up on the Internet.'" Google also provided customer research showing that 94 percent of respondents recognized that "Google" was a brand name. (Notably, only 89 percent of respondents recognized "Coke" as a brand name.) Plaintiffs conducted their own survey, but it was designed by their attorney and, consequently, the court refused to consider the results because of their unreliability.

Primary Meaning

Given all this evidence, the rule is that the Google trademark could be canceled only if its primary significance were as "a common descriptive term for search engines in general." And of course, it's not: People still recognize that "Google" is a brand name separate from its usage as a verb, and when people do use it as a verb, they use it to mean "searching on the Internet," not to denote any search engine. The plaintiffs here shot themselves in the foot by relying on their verb-use argument, which the court dispatched relatively quickly.

Notably, ICANN policies prohibit a person from registering a domain in bad faith. Gillespie purchased 750 domain names in what looked like an attempt to divert traffic, ad revenue, or both. It's not clear what his "business enterprise" is, but it looks like equal parts bad faith and trolling, and the district court correctly told him to hit the road.

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