Failed Cybersquatter Asks Supreme Court To Declare 'Google' A Generic Term

from the give-me-back-my-bad-faith-registrations! dept

Wed, Aug 23rd 2017 3:39am — Tim Cushing

A litigant hoping to retain ownership of more than 750 domain names containing the word "google" has asked the Supreme Court to take a look at his recent Appeals Court loss.

David Elliott first filed a lawsuit against Google back in 2012, claiming the term "google" was now a generic word meaning "to use a search engine." If the term had become generic -- like aspirin, kleenex, and others before it -- Google no longer could claim control of the trademark and should relinquish his hundreds of domain names.

While it's true many people refer to running searches as "googling," nearly 100% of the time these people actually use Google's search engine. (I assume the small percentage that don't either don't know how to change their default search engine or simply don't care where their search results come from.) Elliott's attempted judicial genericide doesn't have much going for it, but at least he's not making assertions about Google and the Philadelphia 76ers colluding to expose his Social Security number to the world. (True story.)

The 9th Circuit Appeals Court [PDF] clearly didn't think Elliott had much of a case. It upheld the lower court's denial of Elliott's claims, pointing out that Google, as a trademarked term, covered far more than just its titular search engine. Thanks to its diversification, it's unlikely Google will become solely synonymous with search engines.

Having suffered two losses in a row, Elliott (along with co-plaintiff Chris Gillespie) is asking the Supreme Court to "undo the chaos" created by the Appeals Court decision. Elliott's main argument appears to be that if the general public verbs a trademarked noun, the owner of the trademark should lose all protection. From the petition [PDF]:

The Ninth Circuit’s opinion contradicts the advice given by scholars, leaving trademark owners and the appropriating public standing on uncertain ground. The Ninth Circuit found that trademarks used as verbs can be used either discriminately (in a manner which indicates source) or indiscriminately. These terms were coined by the Ninth Circuit in its opinion in this case and are not derived from any existing trademark law or precedent. However, the Ninth Circuit found neither discriminate nor indiscriminate verb usage affects the mark’s status as generic or non-generic. The Ninth Circuit found that only usage of the mark as the name (noun) for the class of goods or services on or in connection with which the trademark was used is relevant to the genericness of a mark.

First, taking this decision to its logical end results in untenable and conflicting consequences. A mark may be used ubiquitously as an indiscriminate verb to the point where no one remembers the term’s origin as a trademark and yet, pursuant to the Ninth Circuit’s opinion, the mark’s status would remain unchanged, existing in perpetuity. Second, the Ninth Circuit’s decision only begs more questions. If a verb can be discriminate, does that mean it can be registered as a trademark itself? On the other hand, if verb usage is not trademark usage, then can competitors fairly use verbs which originated with trademarks indiscriminately to describe the action of using their own products?

Some interesting arguments, but ones that kind of skirt around the issue underlying the case: the registration of URLs containing the word "google," most likely done in hopes of selling them off to the search engine giant or simply to harvest traffic from inept Googlers. Not only that, but some of the 763 domains registered would likely have caused problems down the road for the plaintiffs, as they also included names of other trademark holders. The Ninth Circuit opinion lists just a few of the registered domains and there's already an aggressive IP enforcer in the mix: "googledisney.com," "googlebarackobama. net," and "googlenewtvs.com."

It seems highly unlikely the Supreme Court will pick this case for review. While there may be a credible argument out there that Google's headed to genericide in terms of its search engine, the fact that it offers a number of non-search engine products under the Google brand makes it extremely difficult to simply declare "google" means nothing more than running a search. And I don't see the Supreme Court viewing someone's attempt to salvage cybersquatted domain names as being worthy of setting new precedent.

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Filed Under: cybersquatting, david elliott, trademark

37 Comments

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Matthew Cline (profile), 23 Aug 2017 @ 4:20am

In order to protect a trademark, does a company like Google only have to make a good-faith effort to prevent the public from genericizing their trademark, or do they have to actually succeed? It seems to me that requiring success would be setting the bar too high, since (from my non-lawyer understanding of trademark law) a company can only sue if their trademark is used by as a name of a product or is used to advertise a product.
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- Thad, 23 Aug 2017 @ 9:47am
  
  Re:
  
  In order to protect a trademark, does a company like Google only have to make a good-faith effort to prevent the public from genericizing their trademark, or do they have to actually succeed?
  
  Band-Aid and Kleenex still own their trademarks, so I have to figure it's the former.
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  - zyffyr (profile), 23 Aug 2017 @ 8:16pm
    
    Re: Re:
    Ditto for Xerox
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Vidiot (profile), 23 Aug 2017 @ 4:54am

Verbs in violation
You've gotta love it when parts of speech make the news. Next up: Can government issue injunctions against participles? Is a gerund eligible for personhood?
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Machin Shin, 23 Aug 2017 @ 5:29am

"I assume the small percentage that don't either don't know how to change their default search engine or simply don't care where their search results come from."

Ahem... Or maybe there are those of us who do know how to change the default and actively choose to avoid Google. Google has strayed very far from their "Do no evil" motto. I tried to ignore the creepy "we are watching you" feeling, but after getting geolocated ads pushed to my phone I was like "Fuck this shit, I am out"
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- Anonymous Coward, 23 Aug 2017 @ 9:39am
  
  Re:
  Well my iOS devices are set to DuckDuckGo. I use Google Search on my Desktop half the time, but really DuckDuckGo works quite well. It may not have some of the polish of Google for some things, and it doesn't spit out a zillion pages for a search like Google even though anything past the first page is almost always worthless. Not to be spied on everything I do. To not be force feed a bunch of Ad's.
  
  Yahoo used to be the Go To place. Currently it's Google and people are used to do, but really should give DuckDuckGo a chance. Try it for a week!!! You can still use your Google Map's and Gmail.
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  - Machin Shin, 23 Aug 2017 @ 1:45pm
    
    Re: Re:
    Yeah, I have been using DuckDuckGo for years now. I have not missed google at all.
    
    Getting Google off an android phone.... now that was a bit more fun challenge. I did that too though and have been quite happy with it. Takes a little more effort and adjustment than switching search engines did.
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- Thad, 23 Aug 2017 @ 9:48am
  
  Re:
  
  Ahem... Or maybe there are those of us who do know how to change the default and actively choose to avoid Google.
  
  You really think there's a lot of overlap between that group and the group that uses "Google" as a generic term for searching?
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- Jeremy Lyman (profile), 23 Aug 2017 @ 10:49am
  
  Re:
  But you don't likely refer to generic searching as "googling," do you? We're looking for the subset who don't use Google and don't know they don't use Google.
  
  And don't worry, it's no so much that Google is watching you; just that Google is everywhere and knows everything. Better?
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  - Machin Shin, 23 Aug 2017 @ 1:50pm
    
    Re: Re:
    I actually do sometimes just use "googling" as generic term for searching. Not that I don't get the difference, just that it kind of is a generic term.
    
    If I tell someone "Go google it" they know I mean "Go look that up online". Odds are very high they will probably go on to use google, but they might not.
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Anonymous Coward, 23 Aug 2017 @ 7:09am

David really Elliotted this lawsuit up.
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Anonymous Coward, 23 Aug 2017 @ 7:20am

claiming the term "google" was now a generic word meaning "to use a search engine."

Hate to break it to the poor guy, but the word google has its origin in the study of math and it has nothing to do with search of any kind.
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- Machin Shin, 23 Aug 2017 @ 7:26am
  
  Re:
  The origin of a word really doesn't matter that much in this case. He is trying to make an argument about how the word is used currently by the common population. Where the world originally came from or what it used to mean does nothing to effect what it is now.
  [ link to this | view in chronology ]
  - bob, 23 Aug 2017 @ 8:59am
    
    Re: Re:
    His problem is he tried to claim google means, to perform a search. From all the bad lawsuits and regulations people in America and Europe have tried to do, everyone knows google is the internet now.
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    - Xuuths, 23 Aug 2017 @ 9:14am
      
      Re: Re: Re:
      Your point makes his point -- that people aren't thinking of the company Google when they say "google". Using google and internet interchangeably is inaccurate technically, but demonstrates that regardless of diversity (is anyone claiming that they use "google" to mean any of the other Google offerings?), when people say to "google" something, they mean using a search engine.
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- tanj, 23 Aug 2017 @ 9:35am
  
  Re:
  That's googol.
  
  Google is an intentional misspelling.
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Anonymous Coward, 23 Aug 2017 @ 7:27am

"While there may be a credible argument out there that Google's headed to genericide in terms of its search engine, the fact that it offers a number of non-search engine products under the Google brand makes it extremely difficult to simply declare "google" means nothing more than running a search"

Is this still true, I though they moved all non-search related bits under the Alphabet name?
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- Anonymous Coward, 23 Aug 2017 @ 9:44am
  
  Re:
  I think the point is, when someone say they're going to Google something, They actually go to Google!!! They don't then go to BING or DuckDuckGo or whoever else. So it's really NOT a generic term at all.
  
  aspirin is a generic term I assume, but Kleenex is a brand name. The generic term is tissue. I just ask for tissue, I don't think I've ever said Kleenex.
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  - spamvictim (profile), 23 Aug 2017 @ 1:24pm
    
    Re: aspirin
    Bayer lost the US trademark for Aspirin as confiscated enemy property at the end of WW I, so it's not a very good example. They lost the trademark for their highly effective cough syrup Heroin, too.
    
    Better examples are cellophane, escalator, and dry ice, all of which were originally US trademarks.
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JoeCool (profile), 23 Aug 2017 @ 7:41am

Stupid conartist
Like many others before him, he bought a bunch of urls that are related to a big company hoping they'd pay to get them rather than go through the hassle of a lawsuit. He figured google had billions and would throw a million or two his way to make him go away. It's been done since they started selling urls. Some companies fight, some settle, and some do a bit of both depending on circumstances. Google is much more willing to fight than settle.
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Anonymous Coward, 23 Aug 2017 @ 8:03am

Alphabet is the "Mother" Brand
I don't agree with this statement from the article:

"...the fact that it offers a number of non-search engine products under the Google brand..."

Google is a product under the Alphabet brand. So, in this instance, I think that Google should be looked at alone.
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- deadspatula (profile), 23 Aug 2017 @ 8:05am
  
  Re: Alphabet is the "Mother" Brand
  Yes, however, under the google brand, several products do exist - Google Drive, Google Docs/Sheets, Google Maps, ect.
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- Jeremy Lyman (profile), 23 Aug 2017 @ 10:55am
  
  Re: Alphabet is the "Mother" Brand
  Yes, I had that thought about their restructuring too. But the Google subsidiary still does Android, YouTube, and various other things which are related but not completely centered on web search.
  
  https://en.wikipedia.org/wiki/Alphabet_Inc.#Structure
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James Burkhardt (profile), 23 Aug 2017 @ 8:15am

I think it is important in this discussion to note the actual standard for gendercide: That the name is SO generic, you have to use it to be competitive. Its the flip side of the customer protection goal of trademark, That we will revoke a trademark if its presence is so dominant the trademark itself is harming the consumer market. I was unaware until recently that aspirin was a trademark at one time, you don't call that drug anything else. Trying to sell aspirin without calling it aspirin is a fools game. You need the name aspirin to sell your product.

Google, while synonymous with search, and used as a generic term for searching the web, is not generic like Aspirin is. IF I talk about Bing, you know what that is. If I talk about a search engine, you know what that is. There are many places where using google to replace for search or search engine doesn't make any sense. "What site do you google with" is one of them. "I googled it on Yahoo" is another. Google is not so generic you have to use google to make yourself understood or compete in the search space. As such, there is no consumer benefit to Genericide of the google trademark.
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Toom1275 (profile), 23 Aug 2017 @ 8:17am

Until Bing, DuckDuckGo, etc. start having to call themselves "google engines" instead of search engines or else nobody will know what they do, this moron has no case.
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- ShadowNinja (profile), 23 Aug 2017 @ 9:11am
  
  Re:
  ... But that's kind of the point of trademark law, they CAN'T call themselves 'google engines' while Google owns the trademark on Google.
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  - Anonymous Coward, 23 Aug 2017 @ 9:47am
    
    Re: Re:
    Who says they're going to Google something and then go to Bing? I'm going to Google this, and then goes to DuckDuckGo? I don't! Because Google is not generic. I also don't say I'm going to Yahoo and the go use Google.
    
    There's nothing generic about Google. This is a load of B.S.
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    - The Wanderer (profile), 24 Aug 2017 @ 7:09am
      
      Re: Re: Re:
      You don't, and I don't, and I (not speaking for you) think that no one should - but some people do, even including some technically-savvy people.
      
      They may not be at genericide yet, but they're well on the way. James Burkhardt's example sentences "What site do you google with?" and "I googled it on Yahoo" are instructive; contrary to his assertion that neither makes sense, I have literally heard a close equivalent of the latter used in real-world conversation.
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Anonymous Coward, 23 Aug 2017 @ 9:24am

Follow The Money
"Having suffered two losses in a row, Elliott (along with co-plaintiff Chris Gillespie) is asking the Supreme Court to 'undo the chaos' created by the Appeals Court decision."

Who's paying the legal bills for the Nimrod's quest to defraud the unwary?
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Anonymous Coward, 23 Aug 2017 @ 9:58am

Is kleenex fully generic?
Lots of people talk generically about kleenexes, but has that actually been tested in court? I don't recall ever seeing an alternate brand print that on their box.
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- Jeremy Lyman (profile), 23 Aug 2017 @ 11:04am
  
  Re: Is kleenex fully generic?
  It says active here:
  http://www.trademarkencyclopedia.com/kleenex/
  
  And a non-denomination web search pretty consistently comes up with Kimberly-Clark sites which prominently feature the ® symbol.
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Anonymous Coward, 23 Aug 2017 @ 10:59am

I had to google "genericide", I thought it was just a mashup of generic and genecide but turns out it is a perfectly cromulent word...
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Anonymous Coward, 23 Aug 2017 @ 11:27am

Turn a noun into a verb today
Amaze you friends and family
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Anonymous Coward, 23 Aug 2017 @ 12:55pm

Uh oh, someone is trying to hurt TD's biggest sponsor again.
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- Anonymous Coward, 24 Aug 2017 @ 1:10am
  
  Re:
  Sucks for you that Techdirt's been around for 20 years, doesn't it?
  [ link to this | view in chronology ]
Jason, 24 Aug 2017 @ 7:34am

Wait what
"If the term had become generic -- like aspirin, kleenex, and others before it" Yes these terms have become ubiquitous but I cant start a company that sells Aspirin and call it Aspirin, Aspirin is a trademarked brand name for ASA. Hence why we have brands like Aspirin and Bayer. Same with Kleenex. I honestly dont know any other brand other than Kleenex but I know its a brand and no others can call themselves Kleenex. Many people call diapers pampers or pull-ups, but this is a brand and also ubiquitous for these products.
This guy has no case.
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- Thad, 24 Aug 2017 @ 1:33pm
  
  Re: Wait what
  Aspirin is a generic term in the United States. Kleenex isn't.
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