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Court of Appeals opinion – Google is not a generic name

Elliott v. Google, United States Court of Appeals for the Ninth Circuit, No. 15-15809 D.C. No. 2:12-cv-01072-SMM – OPINION, May 16, 2017.

“The panel affirmed the district court’s summary judgment in favor of Google, Inc., in an action under the Lanham Act, seeking cancellation of the GOOGLE trademark on the ground that it is generic. The panel held that a claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. The district court thus correctly focused on internet search engines rather than the “act” of searching the internet. The panel also held that verb use of the word “google” to mean “search the internet,” as opposed to adjective use, did not automatically constitute generic use. The panel affirmed the district court’s conclusion that the plaintiffs’ evidence was insufficient to establish that the primary significance of the word “google” to the relevant public was as a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular.The 9th Circuit Court of Appeals in Elliott v Google, 12-cv-01072 answered in their May 16, 2017 opinion that “Google” has not yet become generic and that Alphabet still controls the name. Some products are in process of becoming genericide, like Xerox or scotch tape; while others have completed the transition, like videotape, aspirin, linoleum, or mimeograph In the area of legal research, terms such as shepardize and blue book have been under attack as they are often referred as the generic process of checking on the validity of a citation or making sure a citation is in proper form. The court held that the key question is whether google has become for the consumer a generic name for online searching. They conclude that the District Court correctly rejected the theory that the verb use automatically constitutes generic use and identified the terms “discriminate verb” and “indiscriminate verb”. Therefore “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 recognized that a “majority of the public uses the verb ‘google’ in a generic sense”, but that does not mean that we have to determine that this is a case of genericide.”

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