“Google” has delayed experiencing the same fate as kerosene, heroin, laundromat, and a number of other brand names that became so popular they died of genericide.
That’s the term for when a brand name becomes so widely used that it no longer just refers to the original trademarked brand.
In the case of Google, one could argue that it’s already the only term that many people use for doing an online search. You rarely hear anyone saying “Bing that for me” or “I Yahooed my name the other day to see what came up.”
But while one might use “Google” indiscriminately, a federal appeals court has ruled that Google is not yet ready for the genericide slaughterhouse.
Back in 2012, two men used a domain name registrar to acquire 763 domain names that combined the word “google” with another brand, like “googledisney.com,” or a person, like “googlebarackobama.net.”
The two man asserted that the Google mark has become generic, and thus, they should be allowed to use domain names that incorporate the word in their business plans.
But the UDRP disagreed, and ordered the domain names transferred to Google, noting that the names were confusingly similar to the Google mark, and thus, the men had no rights or legitimate interests in the domain a names, which the panel said were registered and used in bad faith.
In response, the men filed a complaint in Arizona federal court seeking the cancellation of two trademarks — Number 2884502 and Number 2806075 — contending that the mark has become generic because a majority of the public understands the word google, when used as a verb, to mean the indiscriminate act of searching on the internet without regard to the search engine used.
Google filed counterclaims for trademark dilution, cybersquatting, and unjust enrichment under the Lanham Act, as well as counterclaims for unfair competition and false advertising under California state law.
In 2014, U.S. District Judge Stephen M. McNamee ruled in Google’s favor, [PDF], noting that underlying the two men’s argument is “the proposition that verbs, as a matter of law, are incapable of distinguishing one service from another, and can only refer to a category of services.”
“This premise is flawed: a trademark performs its statutory function so long as it distinguishes a product or service from those of others and indicates the product’s or service’s source,” McNamee wrote.
On Tuesday, the U.S. Court of Appeals In San Francisco upheld that decision [PDF], ruling that the men didn’t present sufficient evidence to show that the general public sees the word “google” as a generic name for internet search engines.
The three-judge panel held that “a claim of genericness or ‘genericide,’ where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good 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.”
“The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic,” Tallman noted.