US Supreme Court to decide whether ‘Google’ is generic?

Words like teleprompter, thermos, hoover, aspirin, and videotape used to be protected brand names under trademark in the U.S. until courts found them to be “generic” and stripped away their trademarks. Now, two men are asking the Supreme Court to do the same thing to Google, arguing the company’s name is an everyday verb and should no longer receive legal protection.

Cybersquatting is a malpractice of using trademarks as a part of their domain name and making a profit out of it at a higher price.

In a petition filed last week, David Elliott and Chris Gillespie asked the Supreme Court to overturn a ruling this spring that upheld Google’s right to use trademark law to stop them using its name on websites like “GoogleDisney.com” and “GoogleBarackObama.com.” Google has become so generic it’s essentially synonymous with the phrase “search the internet.” Google reportedly has a roughly 80 percent share of the desktop search engine market in the U.S.

That ruling, issued by the 9th Circuit in California, found that “google” may be a verb but that it is still a brand in its own right. The decision acknowledged that evidence, including lyrics by the rapper T-Pain, shows “google” can be synonymous with “search the Internet” but pointed out that no other search engine calls itself “a google”—meaning the company’s name is still distinct. “Verb use does not automatically constitute generic use,” wrote presiding Judge Richard Tallman.

“Google produced overwhelming evidence that the public primarily understands the word ‘Google’ as a trademark for its own search engine, not the name for search engines generally,” Judge Paul Watford wrote in a concurring opinion. “In Google’s consumer survey, 93% of respondents identified ‘Google’ as a brand name, rather than a common name for search engines.”

Elliott and Gillespie, however, claim the 9th Circuit’s decision is too broad because “verbing” of words is now common, and that trademarks should not inhabit this practice: The filing also argues that the 9th Circuit made the test for defeating a trademark too strict, and that it should—based on an older decision by a different appeals court—instead have simply looked at how most people use the word in question. If this were the case, the filing suggests, the fact most people use “google” as verb should be enough to defeat the trademark.

The appeal however, is likely a long-shot. The Supreme Court only accepts around 1% of all appeals, and typically does so when there’s a pressing legal question or a significant split between appeals courts. It’s not apparent the 9th Circuit’s “google” ruling, which was supported by trademark scholars, meets either of these criteria.

“It is important for Google to retain the rights to its name because the name ‘Google’ is how consumers identify the goods and services which the company offers,” Gerben said. “If the word ‘Google’ were freely available for everyone to use (i.e. if a court found it were ‘generic’) then anyone could use the name to offer goods or services. This would lead to a situation where it may become nearly impossible to know what goods or services were genuinely offered by Google, Inc (the Mountain View based company).”

 

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