A claim of genericness or \u201cgenericide,\u201d 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 \u201cgoogle\u201d to mean \u201csearch the internet,\u201d as opposed to adjective use, did not automatically constitute generic use.<\/p>\n
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Between February 29, 2012, and March 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word \u201cgoogle.\u201d Each of these domain names paired the word \u201cgoogle\u201d with some other term identifying a specific brand, person, or product \u2013 for example, \u201cgoogledisney.com,\u201d \u201cgooglebarackobama. net,\u201d and \u201cgooglenewtvs.com.\u201d<\/p>\n
Google, Inc. (\u201cGoogle\u201d) objected to these registrations and promptly filed a complaint with the National Arbitration Forum (\u201cNAF\u201d). Google argued that the registrations violate the Uniform Domain Name Dispute Resolution Policy, which is included in the registrar\u2019s terms of use, and amount to domain name infringement, colloquially known as \u201ccybersquatting.\u201d Specifically, Google argued that the domain names are confusingly similar to the GOOGLE trademark and were registered in bad faith. The NAF agreed, and transferred the domain names to Google on May 10, 2012.<\/p>\n
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 \u201cgeneric name for the goods or services, or a portion thereof, for which it is registered\u201d. Elliott petitioned for cancellation on the ground that the word \u201cgoogle\u201d is primarily understood as \u201ca generic term universally used to describe the act of internet searching.\u201d<\/p>\n
Elliott requested summary judgment because (1) it is an indisputable fact that a majority of the relevant public uses the word \u201cgoogle\u201d as a verb \u2013 i.e., by saying \u201cI googled it,\u201d 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 \u201cgoogle\u201d 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.<\/p>\n
At one extreme, generic terms are \u201ccommon descriptive\u201d names which identify only the type of good \u201cof which the particular product or service is a species.\u201d Generic terms are not protectable because they do not identify the source of a product. At the other extreme, arbitrary or fanciful marks \u201cemploy words and phrases with no commonly understood connection to the product.\u201d Arbitrary or fanciful marks are \u201cautomatically entitled to protection because they naturally serve to identify a particular source of a product.\u201d<\/p>\n
Over time, the holder of a valid trademark may become a \u201cvictim of \u2018genericide.\u2019\u201d 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.<\/p>\n
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 \u201cprimary significance of the registered mark to the relevant public\u201d is as the name for a particular type of good or service irrespective of its source. It is often described as a \u201cwho-are-you\/what-are-you\u201d test. If the relevant public primarily understands a mark as describing \u201cwho\u201d 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 \u201cwhat\u201d the particular good or service is, then the mark has become generic.<\/p>\n