US Supreme Court Rejects Case Challenging Google's Trademark as Generic
The U.S. Supreme Court has declined to take up a case challenging the registered trademark for the name of Google Inc.'s search engine.
October 16, 2017 at 04:33 PM
6 minute read
SAN FRANCSICO — The U.S. Supreme Court has declined to take up a case challenging the registered trademark for the name of Google Inc.'s search engine.
Plaintiffs in the case claimed the term Google has become generic since it's widely used as a verb for plugging terms into an online search engine. But the case, Elliott v. Google, was among a group where the justices denied petitions for certiorari Monday without offering further commentary.
The ruling assures the name Google will not go the way of trademarks-gone-generic like thermos, cellophane and aspirin—at least not yet. Owners of valuable brands often go to great lengths to make sure their trademarks don't lose protection because of genericide, when a mark becomes the generic name for similar goods or services. In-house lawyers at the company which holds the VELCRO trademark recently launched an education campaign that includes a humorous music video trying to make the public aware of the correct use of its trademark.
Plaintiffs in the Google case, Chris Gillespie and David Elliott, sued in Arizona federal court in 2012 asking that the Google trademark be found generic. But in 2014, U.S. District Judge Stephen McNamee of the District of Arizona granted summary judgment to Google and rejected the plaintiffs' argument that a trademark ceases to be valid when it's used primarily as a verb.
In May, a three-judge panel of the U.S. Court of Appeals for the Ninth Circuit upheld McNamee's ruling, finding Google's name is protectable under federal trademark laws.
“Even if we assume 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,” wrote Circuit Judge Richard Tallman.
In the plaintiffs' cert petition, their lawyers at San Diego firms Wirtz Law and TDFoster – Intellectual Property Law, wrote that the case gave the court the opportunity to weigh in on whether verb usage of a mark constitutes generic use as a matter of law. The high court declined to weigh in, leaving the Ninth Circuit ruling in place.
Reached by email, Richard Wirtz of Wirtz Law said that he believes Congress needs to step in to address “trademark verbing.
“While the Ninth Circuit landmark decision is now the single authority addressing the verbing of trademarks in the U.S., we don't believe it is the end of the 'verbing of trademark' legal issue,” he wrote. “As the law stands right now, we don't see how any owner of a trademark can intelligently police verb usage, which will most likely result in further challenges to verb-ed trademarks.”
Google representatives didn't immediately respond to messages Monday.
SAN FRANCSICO — The U.S. Supreme Court has declined to take up a case challenging the registered trademark for the name of
Plaintiffs in the case claimed the term
The ruling assures the name
Plaintiffs in the
In May, a three-judge panel of the U.S. Court of Appeals for the Ninth Circuit upheld McNamee's ruling, finding
“Even if we assume that the public uses the verb '
In the plaintiffs' cert petition, their lawyers at San Diego firms Wirtz Law and TDFoster – Intellectual Property Law, wrote that the case gave the court the opportunity to weigh in on whether verb usage of a mark constitutes generic use as a matter of law. The high court declined to weigh in, leaving the Ninth Circuit ruling in place.
Reached by email, Richard Wirtz of Wirtz Law said that he believes Congress needs to step in to address “trademark verbing.
“While the Ninth Circuit landmark decision is now the single authority addressing the verbing of trademarks in the U.S., we don't believe it is the end of the 'verbing of trademark' legal issue,” he wrote. “As the law stands right now, we don't see how any owner of a trademark can intelligently police verb usage, which will most likely result in further challenges to verb-ed trademarks.”
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