On Monday, October 16th, the Supreme Court of the United States denied certiorari of a petition that stated Google has become a generic verb which would make it ineligible for trademark protection.
We previously wrote about the case that originated when Chris Gillespie registered 763 domain names involving a person or a brand paired with the word “google,” for example, “googledisney.com” and “googlebarackobama.com.” Google objected to the registrations and filed a complaint arguing that Gillespie was cybersquatting; registering names, specifically well-known company/brand names, in hopes of selling them for a profit. Google was able to get the domain names transferred, but Gillespie and partner David Elliott filed a joint lawsuit against Google “for cancellation of the GOOGLE trademark under the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a ‘generic name for the goods or services, or a portion thereof, for which it is registered.’” 15 U.S.C. § 1064(3).
The Ninth Circuit Court of Appeals ruled in favor of Google. According to court documents, Circuit Judge Richard Tallman wrote, “even if we assume that the public uses the verb ‘Google’ in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines.”
When a trademark is used generically, a trademark owner may have to take aggressive measures to retain exclusive rights to the mark. Google has taken such steps by discouraging publications from using the term ‘googling’ in reference to web searches and they send cease and desist letters to those infringing on their trademark.
After the Supreme Court’s denial, Richard Wirtz, attorney for the plaintiff, stated in an email that he feels Congress should step in and start addressing the “trademark verbing.” He also stated, “[w]hile the Ninth Circuit landmark decision is now the single authority addressing the verbing of trademarks in the U.S., we don’t believe it is the end of the ‘verbing of trademark’ legal issue,” he wrote. “As the law stands right now, we don’t see how any owner of a trademark can intelligently police verb usage, which will most likely result in further challenges to verb-ed trademarks.”
The Supreme Court’s denial will be seen as a win for prominent brand owners who are at risk of becoming victims of their own success.
Suiter Swantz IP is a full-service intellectual property law firm, based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark, or copyright matters and would like to speak with one of our patent attorneys please contact us.