"Genericide" assault to nullify the Google trademark fails

A USA federal appeals court ruled in favor of Google in a genericide lawsuit Tuesday, noting that the word google is not generic.

It's an ongoing legal fight by companies whose names gain such recognition that their brands become synonymous with their product categories.

In an important trademark ruling, the 9th Circuit Court of Appeals found that "googled" may have become a synonym for Internet searching, but that doesn't mean the company can't protect its name.

Back in 2012, two individuals had acquired over 700 domain names that combined the name "Google" with other words (such as "googlebarackobama.net") from a domain name registrar. That has happened with aspirin, cellophane and thermos, all common words that used to be trademarks. While people have used "google" to refer to searching online for almost 20 years, that does not invalidate the company's trademark.

In essence, Google is not a generic term, although it can be used as a verb, such as, "google how the stock market did today".

Courts often look to evidence such as consumer surveys and testimonies to determine whether the primary significance of a brand name has changed or not, and also consider how the trademark owner is using the name in advertising or even how competitors are using the brand name.

Foster said the circuit court's decision sets precedent on the question of "verbbing" a trademarked name. Google filed a cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy and claimed trademark infringement.

Josh Gerben, an attorney based in Washington said, agreed that genericness is "something where a trademark is no longer able to identify a particular source of a product or service".

The district court was correct to focus on internet search engines rather than the act of searching the internet, the panel said, with U.S. Circuit Judge Richard Tallman writing that "verb use of the word "google" to mean 'search the internet, ' as opposed to adjective use, did not automatically constitute generic use". Others may wonder if a mega-famous name like "Google" could ever actually become generic. Judge Paul Watford concurred separately, calling the majority opinion “well-reasoned, ” but arguing that it was unnecessary “to resolve whether evidence of indiscriminate verb use is categorically irrelevant in an action alleging that a trademark has become generic.”.

Vanessa Coleman

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