Google offices in Mountain View. (Photo: Jason Doiy/ALM)
Escalator. Thermos. Videotape. All began as trademarked names, but eventually lost that status once they became used generically for similar products.
San Diego lawyer Richard Wirtz said the same should be true for Google, one of the world’s most powerful brands, now that so many people say “google” when they mean “search the internet” regardless of search engine.
His argument didn’t get very far with a panel of the U.S. Court of Appeals for the Ninth Circuit on Friday. But one judge seemed to imply that a case could be made down the road with the right evidence.
“Is your position that the term’s use as a verb is just categorically irrelevant to the analysis?” Judge Paul Watford asked Cooley special counsel Angela Dunning, challenging one of the major planks of Google Inc.’s defense.
Dunning conceded that verb use could in some cases be relevant to whether a mark has committed “genericide,” as it’s known in trademark law. But she said the evidence in Elliott v. Google shows that consumers clearly understand the difference between “googling” as a shorthand for searching the internet and the Google search engine itself. “How they use [the mark] in casual conversation is not evidence of genericide,” she said.
Judge Richard Tallman, who dominated the half hour-long argument, clearly sided with Google. “Why isn’t this just like I’m ordering a Big Mac and a coke, knowing that you might get a Pepsi or some other cola?” he said at one point.
The dispute started in 2012 when plaintiff Chris Gillespie registered 763 domain names that combined “google” with other words and phrases, such as googlemexicocity.com, googlesexting.com and googledonaldtrump.com. Google demanded arbitration under the terms of the domain registrar’s agreement. An arbitration panel agreed that the names infringed Google’s trademark and transferred them to Google.
Gillespie and his spouse and business partner, David Elliot, then sued in Arizona federal court to declare Google’s trademark generic.
Google argues that it trademarked the search engine itself, not the act of searching. The fact that people might offer “to FedEx a package” doesn’t mean consumers can’t understand the difference between Federal Express and UPS, Google said, and the same is true for search engines.
U.S. District Judge Stephen McNamee granted summary judgment to Google. He rejected plaintiffs’ survey evidence that purported to show most consumers think of “google” as a way to search the web. Part of the reason was flawed methodology, and part was because some of the surveys were designed by plaintiff attorney Wirtz, not a qualified expert.
Wirtz argued Friday that plaintiffs had a mountain of evidence beyond the surveys, including dictionary definitions and Google’s own usage.
This is “exactly what happens in genericide,” Wirtz told the court. “People used Escalator to mean a moving staircase, and the court said, ‘Sorry, I know you’ve spent a lot of time developing this and marketing it, but you’ve done so well … we’re going to adopt it.’”
Neither Tallman nor Watford seemed convinced. But Tallman gave Wirtz an opening when he used “google” as a verb himself during the argument.
“I don’t know what you were thinking when you actually said ‘google it,’” Wirtz began.
Tallman cut him off. “I was using it colloquially to mean to search the internet,” the judge said. “But I know full well—as a result of this case and I think I knew it before—that it’s a registered mark, and a pretty valuable one at that.”
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