A claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. Verb use of the word “google” to mean “search the internet,” as opposed to adjective use, did not automatically constitute generic use.
Between February 29, 2012, and March 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word “google.” Each of these domain names paired the word “google” with some other term identifying a specific brand, person, or product – for example, “googledisney.com,” “googlebarackobama. net,” and “googlenewtvs.com.”
Shortly thereafter, David Elliott filed, and Gillespie later joined, an action in the Arizona District Court. Elliott petitioned 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”. Elliott petitioned for cancellation on the ground that the word “google” is primarily understood as “a generic term universally used to describe the act of internet searching.”
Elliott requested summary judgment because (1) it is an indisputable fact that a majority of the relevant public uses the word “google” as a verb – i.e., by saying “I googled it,” and (2) verb use constitutes generic use as a matter of law. Google maintained that verb use does not automatically constitute generic use, and that Elliott failed to create even a triable issue of fact as to whether the GOOGLE trademark is generic. Specifically, Google argued that Elliott failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word “google” as a generic name for internet search engines. The district court agreed with Google and its framing of the relevant inquiry, and granted summary judgment in its favor.
At one extreme, generic terms are “common descriptive” names which identify only the type of good “of which the particular product or service is a species.” Generic terms are not protectable because they do not identify the source of a product. At the other extreme, arbitrary or fanciful marks “employ words and phrases with no commonly understood connection to the product.” Arbitrary or fanciful marks are “automatically entitled to protection because they naturally serve to identify a particular source of a product.”
Over time, the holder of a valid trademark may become a “victim of ‘genericide.’” Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, ASPIRIN, CELLOPHANE, and THERMOS were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods.
The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic. Instead, a trademark only becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of good or service irrespective of its source. It is often described as a “who-are-you/what-are-you” test. If the relevant public primarily understands a mark as describing “who” a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing “what” the particular good or service is, then the mark has become generic.
The appeal court concluded that Elliott failed to recognize that a claim of genericide must always relate to a particular type of good or service. He assumed that verb use automatically constitutes generic use. Trademark law recognizes that a term may be unprotectable with regard to one type of good, and protectable with regard to another type of good.