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Google May be a Verb, but Verb Use Alone Does Not Constitute Genericness

Posted in Copyright Law, Cyberspace Law, Legal Info, Web/Tech

Just Google it. Can you Google the score? Have you Googled the restaurant’s reviews? These are all common phrases in today’s internet-reliant society, and it’s entirely due to the creation of Google and its widespread success. By all measures, this should be a good thing for Google. Its company’s primary trademark, Google, has become such an integral part of society that it is now ingrained in our everyday vocabulary as a verb, and even further ingrained in our everyday usage. But for a company with valuable intellectual property rights in its Google trademark, its everyday usage in a general sense, meaning to perform an internet-based search, whether through Google or another search engine, could prove disadvantageous at some point in the future.

In fact, Google recently is currently dealing with an appeal involving these issues after a pair of individuals registered more than 700 domain names incorporating the word Google, including googlejxholdings.com, googleadam.com, and googlekellyclarkson.com. In response to these filings, Google filed a complaint with the National Arbitration Forum, claiming likelihood of consumer confusion and cybersquatting. The arbitration panel agreed with Google and transferred the domain names to Google. In ruling on the dispute, the panel found the domains confusingly similar to Google’s federally registered trademarks, and stated that the registrant had no legitimate interest in the domains and had registered them in bad faith.

Shortly after the arbitration panel issued its ruling, an individual who co-owned some of the domain names that the above-mentioned registrant was required to transfer to Google filed a lawsuit against Google in the United States District Court for the District of Arizona, attempting to cancel Google’s marks on the ground that they have become generic due to everyday verb usage. The registrant eventually joined the lawsuit as a plaintiff.

The plaintiffs moved the District Court for summary judgment, claiming that it was indisputable that the public used the word Google as a verb and “verb use constitutes generic use as a matter of law.” The District Court found in favor of Google, determining that the Google mark was not generic. As an example of another legitimately registered trademark often used as a verb to describe a category of activity, Judge Stephen M. McNamee cited the Photoshop trademark. Judge McNamee discussed how, much like Google, people often use Photoshop to refer to something aside from Adobe’s trademarked product. Judge McNamee further remarked that “It cannot be understated that a mark is not rendered generic merely because the mark serves a synecdochian ‘dual function’ of identifying the genus of services to which the species belongs.”

Still unsatisfied, the plaintiffs petitioned the 9th Circuit for review. In an opinion written by Circuit Judge Richard Tallman, the 9th Circuit reiterated Judge McNamee’s findings and once again acknowledged that the mere use of a word as a verb is insufficient to show genericide. But apparently the opinions of Judge McNamee and Judge Tallman are still not enough for these plaintiffs. They have now petitioned the Supreme Court for review.

The petition for review calls the 9th Circuit’s decision “dangerous” for holding that the use of a trademark as a verb is irrelevant to the determination of whether it has become generic. It also states that the decision is in conflict with the opinions of various experts who have stated that trademarks are proper adjectives, which should not be used as verbs. According to the petition, “[u]nchecked indiscriminate verb usage of trademarks could, and will, lead to a reality where the public can no longer recall that the verb derives from a trademark, while simultaneously allowing the trademark to exist on the principal register in perpetuity[.]” Finally, the petition states that public appropriation of Photoshop, Xerox, and other marks is something to be encouraged, as it is an example of how language is a dynamic, living being, meeting the needs of speakers.

It would be interesting to see how the Supreme Court would rule on this matter, but given that the Supreme Court only grants review to a select number of cases, I suspect we will not find out. This is especially true given that neither the 9th Circuit nor the District Court stated that verb use is irrelevant to the analysis, as it is represented in the petition, but simply that verb use alone is insufficient to demonstrate genericide. However, stranger things have happened.