Wirtz Law Blog

Law360, New York (December 12, 2017, 4:45 PM EST) — From Cheerios box trade dress to generic “googling” to a blockbuster U.S. Supreme Court decision, 2017 was another bumper year for major rulings in trademark law. Here are the 10 you need to remember.

10. In re General Mills IP Holdings II LLC

9. Deere & Co. v. FIMCO Inc.

8. Twentieth Century Fox Television et al. v. Empire Distribution Inc.

7. Allstate Insurance Co. v. Kia Motors America Inc.

6. Black & Decker Corp. et al. v. Positec USA Inc.

5. Booking.com BV v. Matal

4. Elliott et al. v. Google

The Ninth Circuit’s May ruling shot down a case that aimed to prove “google” had become a generic verb that cannot be protected by trademark law.

Two plaintiffs, Chris Gillespie and David Elliott, claimed Google had become “a generic term universally used to describe the act of internet searching,” but Ninth Circuit ruled that the argument ignored one key thing: A claim of genericide must relate to a particular type of product or service, not simply to the word itself.

The proper question, then, was not whether “google” had become a generic term for the “act” of searching, but instead whether it had become a generic name consumers use for internet search engines.

“[The case] has failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word ‘google’ as a generic name for internet search engines and not as a mark identifying the Google search engine in particular,” U.S. Circuit Judge Richard C. Tallman wrote for a three-judge panel.

Gillespie and Elliott appealed to the U.S. Supreme Court, urging the justices to offer “clarity” on the trademark implications of the “increasingly common” use of brand names as verbs, but the high court denied certiorari in October.

The case is David Elliott et al. v. Google, case number 15-15809, in the U.S. Court of Appeals for the Ninth Circuit.

3. Tiffany & Co. v. Costco Wholesale Corp.

2. NantKwest Inc. v. Matal

1. Matal v. Tam

–[original] Editing by Mark Lebetkin and Jill Coffey.

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