Google successfully defends its trademark against genericness claim

In Elliot v Google Inc (No 12-cv-1072 (PHX)(SMM), September 10 2014), Judge Stephen M McNamee of the US District Court for the District of Arizona has held that, even though consumers use 'google' as a verb to mean using any internet search engine, GOOGLE® is a valid trademark because the “primary significance” of the mark to consumers is Google Inc’s internet search engine.

In Elliot, the plaintiffs claimed that:

1. Google’s federally-registered GOOGLE® trademarks were 'generic' because a majority of the public uses 'google' as a verb to mean using any internet search engine without specific reference to the company Google or its GOOGLE marks; and
2. therefore, Google’s federal trademark registrations for the GOOGLE® marks should be cancelled under 15 USC §1043 on the ground of genericness. 

Google answered the complaint with counterclaims for federal trademark dilution, cybersquatting and unjust enrichment, as well as unfair competition and false advertising under California law. After discovery closed, both parties filed summary judgment motions. The court denied the plaintiffs’ summary judgment motion and granted Google’s.

As a threshold issue, the court rejected the plaintiffs’ argument that use of a trademark as a verb renders the mark generic as a matter of law. Once a trademark is registered with the US Patent & Trademark Office, it is presumptively valid - that is, it presumably functions as a trademark by identifying the source of a good or service in the marketplace. However, a trademark registration is subject to cancellation under 15 USC §1064(3) if the trademark covered by the registration becomes generic, which occurs when it is used as the common name for a type or category of goods or services, rather than identifying the source thereof. This phenomenon is colloquially referred to as 'genericide'. Notable examples of trademark genericide include aspirin, cellophane, dry ice, escalator, heroin, kerosene, laundromat, linoleum, margarine, thermos and videotape.

In Elliot, the court held that “[v]erb use of a trademark is not fundamentally incapable of identifying a producer or denoting source”. The court provided two examples of verb usage of trademarks - discriminate and indiscriminate - that do not render trademarks generic as a matter of law. The hypothetical used by the court to describe discriminate and indiscriminate mark-as-verb usage was: “I will PHOTOSHOP the image”. The phrase could mean using Adobe’s brand of photo-editing software. If so, PHOTOSHOP functions solely as a trademark. This is discriminate mark-as-verb usage. 

However, the phrase could also mean using a brand of photo-editing software other than Adobe’s. If so, then PHOTOSHOP does not function solely as a trademark; rather, the court held that it “functions as synecdoche describing both a particular species of activity (eg, using Adobe’s PHOTOSHOP brand software) and the genus of services to which the species belongs (eg, using image manipulation software in general)”. This is indiscriminate mark-as-verb usage. However, the court held that indiscriminate mark-as-verb usage is not ipso facto proof of trademark genericide because it must still be determined what the “primary significance of the term [is] to the consumer. If the term indicates a product of a single producer to the consumer, it is a valid trademark”. 

The plaintiffs did not conduct a survey focused on the dispositive issue of the primary significance of 'google' to consumers; rather, their survey focused on whether consumers used 'google'-as-verb in the discriminate or indiscriminate sense. The plaintiffs’ survey results suggested that 51% of consumers used 'google'-as-verb in the indiscriminate sense to mean using any internet search engine, including Google’s. Google, on the other hand, did conduct a survey focused on the dispositive issue, which demonstrated that more than 90% of consumers identified 'google' as a brand name for an internet search engine. Based on this evidence, Judge McNamee held that the “primary significance” of the term 'google' to consumers was Google’s internet search engine, and denied the plaintiffs’ summary judgment motion.

Elliot highlights an important point for trademark owners and practitioners alike. With respect to trademark owners, Elliot illustrates a common way that trademark genericide occurs: through improper trademark usage.  For example, Xerox Corporation’s national advertising campaign many years ago encouraged consumers to say they were “photocopying”, not “Xeroxing” documents. If the trademark owner does not take active steps to correct improper usage of their mark, it runs the risk that, unlike GOOGLE®, the primary significance of their mark to consumers will become the name of a type or class of goods or services.

With respect to trademark practitioners, Elliot serves as an important reminder that trademark surveys should always be tailored towards the dispositive issue(s) in a case. Had the plaintiffs’ survey in Elliot been tailored towards the primary significance of 'google' to consumers, instead of whether consumers used 'google'-as-verb in the discriminate or indiscriminate sense, the outcome may have been different.

Howard J Shire and Jonathan Thomas, Kenyon & Kenyon LLP, New York