The Google trademark has not become generic in the United States, notwithstanding the term google being used by the public as a verb to indicate web searching.
The Supreme Court of the United States put an end last Monday to an attempt to invalidate the Google trademark.
On 16 October 2017, the Supreme Court declined to review a petition filed by two private citizens claiming that Google can no longer be a registered trademark on the grounds that it has become generic.
In many jurisdictions, including the United States, trademark law provides that if a registered trademark becomes a term commonly used to indicate a product or service, that trademark cannot continue to be registered.
The reasoning is that if the trademark is used commonly to indicate a product or service in general, and no longer indicates the product or service originating from a certain enterprise, it is no longer distinctive.
Consequently, a judge can invalidate the registration as a trademark of a term if it is proven that the term has actually become of general use, and therefore generic.
Biro, nylon and aspirin are three examples of trademarks that underwent “genericide”, becoming terms used commonly to indicate a product in general and losing their status as registered trademarks along with their distinctive character.
Chris Gillespie had registered 763 domain names including the term “google”. Google claimed that Mr Gillespie had infringed its trademark rights. The domain names were eventually reassigned.
In 2012 Chris Gillespie and David Elliot brought proceedings before the Arizona federal court requesting that the Google trademark be declared invalid because it had become generic.
The case was grounded mainly on the argument that the term google is now used as a transitive verb (to google something) to indicate performing an internet search with a search engine. The Arizona court rejected the argument and granted summary judgement to Google.
An appeal was brought before the United States Court of Appeals for the Ninth Circuit but again the argument was rejected.
The judges pointed out that genericide occurs when the term becomes an exclusive descriptor of the product or service, making it impossible for competitors to describe a similar product or service by another term.
With regard to use of the term google as a verb, the judges found that even assuming 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”.
The Supreme Court’s refusal to hear the petition leaves the Ninth Circuit decision in place.