No Googling on Bing: Search Leader Avoids 'Genericide' in Trademark Case

By Jacob Gershman Features Dow Jones Newswires

It happened to aspirin when the masses started popping the pills by the billions. The same fate befell the "yo-yo," the "escalator" and the "laundromat."

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But for now, Google has avoided "genericide."

A federal appeals court Tuesday affirmed the "Google" trademark, ruling that while in some corners the verb associated with the company has become synonymous with "internet search," Google is still widely identified as a brand name worthy of protection.

"Aspirin," "trampoline," "thermos" and "brassiere" are examples of common words that once were brands but fell victim to their own success, losing their trademark protection.

Under federal trademark law, a registered trademark can be canceled if it "becomes the generic name for the goods or services, or a portion thereof, for which it is registered."

That hasn't yet happened to Google, concluded the Ninth U.S. Circuit Court of Appeals in San Francisco, which held that people still understand the word as identifying not just any search engine, but Google's in particular.

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The legal dispute kicked off five years ago when plaintiffs David Elliott and Chris Gillespie acquired hundreds of domain names incorporating the word "google." Google, a unit of Alphabet Inc., objected to the registrations as "cybersquatting" and an infringement of Google's trademark.

In 2012, the two men joined together in a federal lawsuit in Arizona, petitioning for the cancellation of the "Google" trademark.

To support their contention that Google had become generic, the plaintiffs cited public surveys, deposed two expert linguists and submitted a list of dozens of movies and television series -- such as NBC's "The Office" -- in which characters used the word as a verb.

They also pointed to major dictionaries that defined "google" as to search for something online.

Google and the three-judge appellate panel both noted that those were secondary definitions. "In every dictionary in the record, the first entry for 'Google' or 'google' refers to Google's search engine the first," wrote Circuit Judge Paul Watford in a concurring opinion.

The linguists testified that the word google means "to search on the internet." But Google, wrote Judge Watford, "extracted concessions" from the experts that Google still functions as a trademark.

In its unanimous decision, the appeals court judges said it really doesn't matter how often a lower-g "google" is used in casual conversation.

Even assuming that a majority of the public uses the verb "google" in a generic sense, that alone "cannot support a jury finding of genericide," wrote Circuit Judge Richard Tallman for the panel, affirming a lower-court ruling.

The plaintiffs failed to "show that there is no way to describe 'internet search engines' without calling them 'googles,'" he wrote.

Google observed that other search engines, like Yahoo or Microsoft's Bing, don't encourage their customers to "google it."

In court papers, the company likened its brand to Xerox and Kleenex. Consumers may use those words generically, Google said, but they're still aware of their trademark significance.

A recent Xerox advertising campaign alluded to the war against genericide, reminding consumers: "When you use 'Xerox' the way you use 'aspirin' we get a headache."

"It is now even more arduous to prove that a mark is generic," said a lawyer for the plaintiffs.

Google declined to comment.

Write to Jacob Gershman at jacob.gershman@wsj.com

(END) Dow Jones Newswires

May 16, 2017 19:22 ET (23:22 GMT)