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Mai 31, 2017
Edward F. Maluf, Seyfarth Shaw LLP, USA
Brian L. Michaelis, Seyfarth Shaw LLP, USA
Kenneth L. Wilton, Seyfarth Shaw LLP, USA

How Not to Prove a Mark is Generic. Use of GOOGLE as a ...


Edward F. Maluf, Seyfarth Shaw LLP, USA , Brian L. Michaelis, Seyfarth Shaw LLP, USA , Kenneth L. Wilton, Seyfarth Shaw LLP, USA The Ninth Circuit Court of Appeals explained recently in Elliot v. Google that use of the GOOGLE trademark as a verb, “e.g. google it,” does not alone cause the mark to become generic. The question presented was whether the public’s use of “google” as a verb referred to the Google search engine, or whether it was directed more generally to the covered goods or services, i.e. search engines. In affirming a grant of summary judgment in Google’s favor, the Court emphasized the necessary and inherent link between genericide and a particular type of good or service and that trademarks can be used in forms other than adjectives without being rendered generic.
Plaintiffs relied on their argument that verb use constitutes generic use as a matter of law and therefore the lower court’s ruling in Google’s favor was inappropriate. The Court, however, disagreed with this proposition, focusing on two points that Plaintiffs failed to recognize: first, that a claim for genericide “must always” relate to a particular type of good or service; and second, that  read more