August 17, 2017.
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 “Our hope is that the high court will recognize what the lower court did not: that outdated precedent cannot be stretched to fit the entirely new issue of verbing trademarks.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
- Defendant Google Inc.’s Motion for Summary Judgment; Memorandum of Points and Authorities in Support Thereof
- Plaintiff Elliott’s Memorandum of Points and Authorities in Opposition to Google’s Motion for Summary Judgment
- Amended Order Granting Google Inc.’s Motion For Summary Judgment
- Appellant Elliott’s Opening Brief
- Appellee Google Inc.’s Answering Brief
- Appellant Elliott’s Reply Brief
- Amended Opinion of the United States Court of Appeals for the Ninth Circuit
June 26, 2012. Channel 3 News, Arizona.