Authors: Naresh Kilaru and Danielle Wright Bulger
“Google” and the verb “Googling” are not generic terms, the United States District Court for the District of Arizona has ruled. See Elliot v. Google, Inc., 2014 U.S. Dist. LEXIS 127352 (D. Ariz. Sept. 10, 2014).
The lawsuit started in 2012 when plaintiffs David Elliot and Chris Gillespie acquired 763 domain names combining the word “google” with another term, e.g., googledisney.com, googlebarackobama.net, googlemexicocity.com. After Google filed a UDRP complaint, the UDRP panel determined that the domain names were confusingly similar to the GOOGLE mark and ordered that they be transferred to the search-engine company. The plaintiffs then filed the present suit seeking cancelation of two of Google’s U.S. trademark registrations for the GOOGLE mark on grounds of genericness, arguing that “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.”
The court disagreed and granted summary judgment in Google’s favor on the genericness issue. To determine if a mark has become generic, courts apply the “primary significance test.” In this case, the court held that the primary significance of the word “google” is the company and that “google” did not cease to function as a trademark just because its primary use is as a verb. Although both sides included expert testimony and consumer survey evidence to support their respective positions, there was no evidence of Google’s competitors using the word “google” as a descriptive term for internet search engines and the plaintiffs presented no evidence that major media outlets used the term “google” to refer to any search engine other than Google. Because no genuine issues of fact existed as to genericness, the court granted Google’s motion for summary judgment on this issue.
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