August 17, 2017.

Elliott v. Google – Petition for Writ of Certiorari
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PRESS RELEASE

GOOGLE TRADEMARK STILL AT RISK: U.S. SUPREME COURT REVIEW SOUGHT IN CASE SEEKING CANCELLATION OF GOOGLE TRADEMARK

SAN DIEGO, CA AUGUST 21, 2017 — Two San Diego-headquartered law firms, Wirtz Law APC and TD Foster IP Law, filed a petition for certiorari to the Supreme Court of the United States on behalf of Plaintiffs David Elliott and Christopher Gillespie. The petition seeks the high court’s review of the Ninth Circuit’s decision in Elliott v. Google.

This case originated when Elliott filed suit against Google, Inc. (now known as Alphabet Inc.) alleging that the GOOGLE trademark had become so widely used as a verb meaning “to search the internet” without regard to which search engine is used that the mark had become generic.

The petition asks the Supreme Court to consider whether the Court of Appeals for the Ninth Circuit erred by: (1) holding that indiscriminate usage of “GOOGLE” as a verb to mean “to search on the internet, regardless of what search engine is used” was completely irrelevant to whether the GOOGLE trademark is still valid; (2) holding that the statutory test for genericness (what is the “primary significance” of the mark to the relevant public) should be interpreted as a test for majority understanding rather than as a test for majority usage (as leading scholars in the area of trademark law have long said); and (3) weighing and discounting as irrelevant all of the evidence of the genericness of the word “GOOGLE.”

Petitioners argue that the decision by the appellate court decided new and important issues of federal trademark law, such as the ramifications of indiscriminate verb usage of a trademark by the public, in a manner inconsistent with the public’s right to appropriate former trademarks for use as generic terms, including as generic verbs.

“The appellate court’s decision leaves trademark owners, the public, and the media alike without adequate guidance as to what is and is not allowed when using trademarks as verbs,” said Richard Wirtz of Wirtz Law APC. “Our hope is that the high court will recognize what the lower court did not: that outdated precedent cannot be stretched to fit the entirely new issue of verbing trademarks. The Lanham Act draws a careful balance between free speech rights and the rights of business owners to control use of words which indicate the source of goods or services. In this case, the lower court’s decision disturbed that balance in favor of business owners and to the detriment of the public. We hope that the high court will step in and restore that balance.”


Relevant Case Documents
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  1. Defendant Google Inc.’s Motion for Summary Judgment; Memorandum of Points and Authorities in Support Thereof
  2. Plaintiff Elliott’s Memorandum of Points and Authorities in Opposition to Google’s Motion for Summary Judgment
  3. Amended Order Granting Google Inc.’s Motion For Summary Judgment
  4. Appellant Elliott’s Opening Brief
  5. Appellee Google Inc.’s Answering Brief
  6. Appellant Elliott’s Reply Brief
  7. Amended Opinion of the United States Court of Appeals for the Ninth Circuit

 

June 26, 2012. Channel 3 News, Arizona.

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PRESS RELEASE

Wirtz Law APC Files Federal Lawsuit Against Google Inc. to Cancel “GOOGLE” Trademark

San Diego, Calif. – May 23, 2012 – On Monday, May 21, 2012, New York businessman David Elliott filed a lawsuit in the United States District Court for the District of Arizona against Google Inc. to cancel the “google” trademark (CV-12-1072-PHX-NHB). In this classic David versus Goliath clash, Mr. Elliott claims that the word “google” has become generic. The complaint claims the word “google” is no longer exclusively used to identify the company’s product or services. Instead, the word “google” is now commonly used worldwide in most languages as a verb meaning “to search for something on the Internet.” The loss of trademark protections due to a mark losing its distinctiveness is called “generification” or “genericide.”

Download the full complaint with exhibits here. See the complaint without exhibits here.

According to Mr. Elliott’s trial attorney, Richard M. Wirtz of Wirtz Law APC, “‘Google’ is not the first term to be ‘genericized.’ Other famous trademarks that were similarly genericized include ‘aspirin,’ ‘escalator,’ ‘zipper,’ ‘thermos,’ ‘kerosene’ and ‘yo-yo.’ Generification is a risk of great success.”

Although a handful of companies like Kleenex and Xerox have been able to reverse the genericide of their marks through aggressive and protracted ad campaigns, co-counsel for Mr. Elliott, Thomas Foster of TDFoster believes, “As a practical matter, it’s probably too late for the company to undo the generification process. In its own 2010 Annual Report to its shareholders, the company acknowledged that the word ‘google’ could become synonymous with ‘search,’ and stated, ‘If this happens, we could lose protection for this trademark.'”

The dispute began when Mr. Elliott registered several hundred domain names containing the generic verb “google.” The domains were intended to be used as part of a new Internet-based business that will promote commerce, community, relationships, personal health, charity and more. The suit alleges that although several hundred, if not thousands of other domains containing the verb “google” have been registered by others,  Google Inc. singled out Mr. Elliott and obtained an order pursuant to ICANN on May 10, 2012, requiring that the domain names be transferred to Google Inc. He was forced to bring this action in order to protect his domain names from being taken by Google Inc.

“This is not a claim for damages,” said Mr. Elliott. “I am simply trying to protect my rights against a company that is attempting to unfairly control the use of a generic word: ‘google.'”


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