Generic Trademarks Elliot v Google

05 06 2017

Google has fought off an attempt to have their trademarks for ‘GOOGLE’ cancelled in the United States after a 3.5 year long court battle.

In 2012, Chris Gillespie acquired nearly 800 domain names that included that word ‘google’, such as ‘’ and ‘’. In response to this, Google filed UDRP complaints against these domain names with the National Arbitration Forum (NAF) arguing that Gillespie was “cybersquatting” and that the domain names were confusingly similar to the ‘GOOGLE’ trademark. Google was successful, and the domain names were transferred to Google.

Shortly after, David Elliott, later joined by Gillespie, petitioned to have the ‘GOOGLE’ trademark cancelled under the Lanham Act; claiming that the term ‘GOOGLE’ was now primarily understood as a “generic name for the goods and services, or a portion thereof, for which it is registered”. A claim of genericness, or “genericide”, refers to the situation where a once valid trademark is appropriated by the public who uses the term as a generic name for a particular type of good or service. Examples are ‘ASPIRIN’, ‘CELLOPHANE’ and ‘THERMOS’, which were once understood as describing the source of certain goods, but were later adopted by the public as generic names for the goods themselves. Therefore, if the public primarily understands the term as referring to “who” a particular good or service is, or where it comes from, then it is valid, but if they understand the term as describing “what” the particular good or service is, then the mark has become generic.

Elliot argued that the majority of the public now uses the word ‘GOOGLE’ as a verb and that verb use automatically constitutes generic use. The United States Court of Appeals for the Ninth Circuit rejected Elliot’s arguments and found that Elliot had failed to present sufficient evidence “that the relevant public primarily understands the word “google” as a generic name for internet search engines”. In his judgement, Judge Tallman held that “a claim of genericide must always relate to a particular type of good or service…[as] trademark law recognises that a term may be unprotectable with regard to one type of good, and protectable with regard to another”. Therefore, Elliot had to show that the public understood  ‘GOOGLE’ as a generic term for internet search engines, rather than simply the act of internet searching.

This case illustrates that public use of a trademark as a verb does not automatically constitute generic use for the purposes of genericide, and that a claim of genericde needs to be connected to a particular type of good or service. It also emphasises the need for companies to remain wary of generic or descriptive use of their trademarks to avoid falling victim to genericide.*

*Note – This case was decided under US trademarks law. US laws may differ with the legal position in Australia, and therefore a different outcome may come about in Australia.

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