The Ninth Circuit has for the second time ruled [PDF] that “Google” isn’t a generic trademark. The US district court had already reached this conclusion in 2014.
The court’s opinion delves deeply into definitions, says plainly that “verb use does not automatically constitute generic use.” This eviscerates the plaintiff’s case because, as Judge Watford says in a concurrence, “the plaintiffs produced thousands of pages of largely irrelevant evidence showing merely that ‘google’ is sometimes used as a verb.”
To reach its conclusion, the court says that “we now recognize that an internet user might use the verb “google” in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.” The court gives an example:
Elliott purports to offer an example of generic use by T-Pain, a popular rap music artist. But we will not assume that T-Pain is using the word “google” in a generic sense simply because he tells listeners to “google [his] name.” T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain’s inner thought process, we cannot tell whether he is using “google” in a discriminate or indiscriminate sense.
This “discriminate”/”indiscriminate” distinction is a win for other very popular trademarks. For example, the court analogizes the oft-used Kleenex example:
We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for “a Kleenex tissue,” it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for “a Kleenex.”
Big Win for Big Trademark Owners. The Google brand is one of the most valuable on earth. The court emphatically endorsed all of its practices (and the significant dollars Google spent preparing this case). I’m sure Google will face other genericide challenges in the future, but this ruling will make such challenges difficult or impossible. Other big brands whose trademarks are often used as verbs or nouns also have a lot of reason to cheer this ruling.
Read more analysis here