GOOGLE Trademark Ruled Safe From Itself

In a decision spiced with some colorful twists and turns, on September 10, 2014, a federal court in Arizona ruled that GOOGLE had not become a generic term for Internet search engines, despite evidence that the majority of Americans use "google" as a verb to mean "search on the Internet without regard to which search engine is used."

The court first indulged in the all too common description of a generic term as referring to a "genus" of goods or services and the trademark identifying a "species." It is unfortunate that some judges still insist that trademark lawyers must consult 10th grade high school botany textbooks in order to practice their craft. Indeed, in the GOOGLE case the court also required the lawyers to consult their dictionaries (or at least google some definitions), stating that the mark functions as a "synecdoche," that the plaintiffs' "procrustean" grammatical standard was misplaced, and that the matter should not be framed as "grammatical logomachy."

Despite the court's sometimes obtuse language, it did correctly grasp the fundamentals. Specifically, the test for determining whether a registered trademark has become generic is its "primary significance" to the relevant public, under Section 14(3) of the Lanham Act. As the GOOGLE case so keenly demonstrates, the key issue in genericide cases is not necessarily how the public uses a word, but rather what it understands the word to mean. Casual use even by a majority of Americans to "googling" without regarding to whether the Google search engine is used was not enough to overcome the evidence that over 93% of Internet users identify GOOGLE as a trademark. In essence, the court found that the GOOGLE trademark had not been googled to death.