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Keep on Googling (by Searching the Internet using the Google Search Engine)

Google, Inc. has prevailed in an appeal of a lower court decision upholding Google’s US trademark registration. In affirming the lower court decision, the US Court of Appeals for the Ninth Circuit also rejected the plaintiff’s arguments that Google has become a generic term for searching the Internet.

The plaintiff in the case had registered a number of domain names incorporating the element “google”. In response, Google filed a complaint alleging that the plaintiff’s actions amounted to domain name infringement, or cybersquatting, and succeeded in obtaining an order to have the domain names transferred to Google. After that, the plaintiff filed an action petitioning for the cancellation of Google’s trademark registration, on the basis that the word “google” has become primarily a generic term used to describe the act of Internet searching, regardless of the search engine used.

In upholding the lower court ruling affirming the validity of Google’s trademark registration, the Court held that a claim that a trademark has become generic (referred to as “genericide”) must relate to a particular type of good or service. In this case, the relevant services were Internet search engines, and not the act of searching the Internet, as argued by the plaintiff. The Court also rejected the plaintiff’s argument that use of a trademark as a verb constitutes per se generic use of the trademark, and found that the plaintiff’s evidence was not sufficient to establish that the public primarily understands the word “google” as a generic name for Internet search engines.

For more information, read the judgement in Elliott v. Google Inc., 9th Cir. No. 15-15809, available here.


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