Translate was added to help people around the world understand each other.48 Google Inc.
officially became a famous trademark when the word “Google” became a verb in the Oxford dictionary in the same year.49 However, despite all these other Google functions, Google’s most recognized and used product is still the Google search engine. This is because all of Google’s other services are somehow based on the Google search engine, or in other words, the world’s information.
There is only so much a company is able to achieve on its own which is why acquisitions and partnerships became critical to part of Google’s success. Google acquired Keyhole in order to make Google Maps work out.50 Gathering printed information also fell within the scope of organizing the world’s information which lead to the launch of Google Books. It was a seven-year long project from 2002 to 2008 as it involved more complicated factors including copyright.
Google partnered with academic institutions like Stanford, Harvard and other related associations and scholars while working out obstacles along the way to make the launch successful.51 In 2015 Google was working on so many different side projects that were not necessarily related to internet search that they had to create a parent company called Alphabet in order to segment their projects into different individual companies while they all belonged to Google under the
umbrella of their parent company, Alphabet.52 The Google search engine still monopolizes the search engine market and its services is very intimate to people’s lives, building a widespread, firm reputation of a tool for search.
B. Google’s Genericide Law Suit
This is a law suit starting from September, 2014 and ending in February, 2019. This case started from Arizona District Court to the Ninth Circuit. On February, 2019 the plaintiffs’
petition to cancel on both registered federal trademarks of Google were denied53. a. 2014 Case Brief-Arizona District Court
It would be unfair to say that Google’s trademark was argued to be rendered generic because they did not care about their trademark rights. Google filed their trademark for registration as soon as they were founded and continued to register Google related trademarks throughout the years. Google filed for a word trademark by the registration number of 2884502 for the ninth international class of computer hardware on September of 1998, the year that it was officially founded. They filed for a service mark the next year on September of 1999 by the
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registration number of 2806075 for the 32nd and 42nd international classes involving computer network services and software interfaces. Both were successfully registered on 2004.54 As Google expanded over the next decade, it became an indispensable tool in people’s lives. Google also filed their trademark in many other classes as they expanded their services and products, covering many other business sectors. The timeline and classes they registered for under the Google mark is as in the timeline.
Figure 1: Google Trademark Registration Timeline (Drawn by author)
Although Google did not cover all classes, its reputation was widely acknowledged that it was considered a well-known trademark (or famous trademark)55. Under such circumstances, Google did not have to register for all classes in order to be entitled to protection. It was also under such circumstances that it became dangerous for Google to not educate its users vigorously about the “correct” usage of its trademark.
The search engine was so convenient that people would say things like “Let me Google it.” to refer to looking up information online, probably regardless of the browser used. Google’s reputation grew into more than just a well-known company, but also a commonly used word. A law suit arguing that the Google trademark should be rendered generic due to its linguistic usage was filed in September of 2014 by plaintiffs David Elliot and Chris Gillispie et al.56 They
registered for many domain names combining the Google trademark with different words like
“googledisney” for instance, in March 2012.57 They claimed that this was for business use.
Google filed a complaint to the National Arbitration Forum and had the domain names
transferred to Google in May 2012. To register such domain names would be an unwise decision to make if one had some basic knowledge to trademark registration. The combination would obviously contain risk of being too similar to the well-known trademark58 of Google, this would
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result in confusion for consumers and infringement to Google’s trademark rights and would have little chance of being successfully registered. Nevertheless, the plaintiffs brought forth a law suit two years later in 2014 to argue that the Google trademark should be rendered generic. The plaintiffs claimed that it was a commonly used word that did not merely represent Google anymore, but also implies the action of searching online. This was a close call for the Google trademark. It may seem like Google had their way in every lawsuit in this case, but actually Google was just lucky that the plaintiff argued in the wrong aspects. Google’s trademark might’ve been rendered generic if the plaintiffs had not argued the trademark to be a verb, but a noun instead.
For a trademark to be rendered generic, it has to refer to the class of products instead of the producer in the eyes of the consuming public.59 However, this definition was is somehow vague and has had more and more room for controversy as companies diversify in products and services. If a trademark must refer to a class of products to be rendered generic, should a
trademark like Google be rendered generic for being a verb that represents the action of
browsing the internet for information? Explained on a wider scope, the plaintiff is implying that the word Google is recognized as referring to the class of actions of searching for information online. This is the issue in the case of Elliott v. Google, Inc. Inc. The surveys that the plaintiffs carried out proved that the general public did use “google” to refer to browsing for information on the web.60 If a survey wasn’t enough, they also cited CEO of Google Larry Page’s words
“Have fun and keep Googling.”61 The court decided that this was sufficient evidence to prove that “google” was used as the plaintiff had argued. However, Google was still not rendered generic under the given circumstances.
Senior Judge Stephen M. McNamee of Arizona District Court still held that Google was not to be rendered generic because it is currently used as a verb instead of a noun which stands for search engines.62 People do not think about the class of products of search engines when they see the Google trademark, which spares Google from being rendered generic. In conclusion of this case’s first trial, Arizona District Court feels that for a trademark to be rendered generic, reference has to work bilaterally. When people think of that class of products, they will refer to a specific trademark, and vice versa, when people see a certain trademark they will also think of that class of products.
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This bilateral requirement is the main reason why the Google trademark will be safe from further arguments of genericide today. Why is that? Maybe it would be possible if one did a survey and came up with the result that the consuming public, referring to people who have had experience of using more than one browser and are familiar with Google Chrome, use the word Google to refer to all browsers even if they are not Google Chrome. This would fulfill one end of the bilateral requirement, the other end would be for users of all servers refer to them as
“Google”, just as we would refer to all brands of tissue paper is “Kleenex”. However, it would be very unlikely for people in China who use Baidu to intuitively think of Google when they are looking up information when the search button on the Baidu webpage says “Baidu it” in Chinese, and users are a population of approximately 1.3 billion people. Main browsers used nowadays other than Google may also include Baidu, Bing, and some others but we do not intuitively think of the Google browser when we use them. This makes the bilateral reference of Google and browsers non-existent.
b. 2017 Case Brief- 9th Circuit
After the Arizona District Court ruled that Google’s trademark should not be rendered generic, plaintiff Elliot raised two arguments in appeal. The first argument was that the district court failed to apply the Primary Significance Test correctly and did not succeed to notice that the verb use of a trademark should contribute greatly to its road to genericness. Their second argument was that the evidence provided by the plaintiff was weighed incorrectly. Google also counterclaimed for trademark dilution, cybersquatting and unfair enrichment under Lanham Act and unfair competition and false advertising under California State Law.
The ninth circuit denies Elliott’s first argument because he has failed to prove that the use of Google as a verb has hurt its significance as a trademark.63 Elliott’s assertion that genericide should happen because it is widely used as a verb is not a strong enough argument in view of what constitutes a trademark to become generic. Therefore, the district court did not fail to apply the Primary Significance Test. If Elliot could prove that the usage of Google as a verb
diminished its significance because users also say they are Googling when they are using other browsers, then his argument may be stronger and more effective.
The second claim of Elliott has also been denied because the ninth circuit agrees with the district court’s decision that Elliott’s provided evidence was irrelevant.64 The usage of Google as
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a verb by CEO Larry Page, by celebrity T-pain, the survey conducted and other provided evidence by Elliott only proves that Google is used as a verb and it proves nothing more than that. To constitute genericness the plaintiff must prove that this verbal use has hurt the significance of a trademark, undermining its distinctiveness.
However, the ninth circuit’s stance on this case is not mainly that the verbal use of Google does not prove making the Google trademark insignificant as an action for search. The ninth circuit has repeatedly mentioned that people do not refer to other search engines as “a google”.65 This indicates that the court still thinks that trademarks should be used as nouns that refer to the whole class of products in order to be rendered generic. It is evident that the bar for a mark to be rendered generic higher than for it to be used as a generic word. This shapes a
different landscape of marketing for different types of companies, some may have to be more careful than others in the act of advertising. Although the Court of Appeals Circuit Judge Tallman has held that whether a trademark should be rendered generic depends on whether it refers to a product or service, could one argue that the verb “google” something is already implying the service of a browser? The judgment of this case has made it harder for service marks to be rendered generic and companies with trademarks for innovative tangible products need to be more careful with their marketing strategies.
c. Impact upon Trademark Marketing
The judgement of the Elliott v. Google, Inc. points out that the bar to genericness is lower for companies providing actual tangible products compared to companies that provide services.
Firstly, this would be quite unfair to innovative startups that make breakthrough tangible products that no one has ever seen before. If the product is too innovative, it is very likely that there is no other way to refer to it other than to call it by its trademark, which in that case most likely would make the trademark a noun as it refers to a tangible object. This would be the case to first movers of a certain product. If it manages to take up most of the market share over a long time span, then its risks of being rendered generic would be even higher. However, if a startup provides innovative service, chances for that company name to be rendered generic one day would be minimal in America under the given circumstances after this case. Only when trademarks are used as a noun are they likely to be rendered generic.
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The case of Google v. Elliot implies that firms may need to start to consider what part of speech their trademark may become in the future when making marketing strategies to build their brand image. It seems evident that the impact of this case has made it harder for trademarks that are verbs to be rendered generic. While most trademarks can be verbs, nouns and also adjectives, most of the time only when a trademark is used as a noun in daily language will it be rendered generic. Although according to the Lanham Act being used as an adjective does not prevent a trademark from becoming generic66, there are scholars that think only nouns can be rendered generic67 and it does seem like the scholars who think so are right.
d. 4C Applications of Google’s Trademark Marketing that Prevents Potential Genericide If I were thinking in the perspective of Google, I would do something to prevent people from thinking of the Google trademark as an equivalent to search engines. C1 may already seem very low for users because almost all of Google’s online services are free and Google provides a wide range of services as well, there are still latent costs the user needs to provide upon usage like personal data. These costs are growing obvious to users as some will mention in my focus groups. While collecting user data is a necessity for target advertising to Google, the feeling of being deceived and shut away from the truth of data collection will affect C4 and customer benefit. This affect will undermine Google’s credibility and make education through marketing more difficult. Therefore, if I were Google I would make it clear to users in my front page that there is data collection and that they have the right to choose whether they wish to provide such data, including instructions to related settings. Honesty is valued by customers according to qualitative research in this dissertation, and such strategies should enhance customer benefit.
I would try to cut down on C2 because users need to spend effort understanding what other services other than searching Google provide. This is already something Google is starting to do on social media as they have created various accounts68 and feature their hardware products to present to their users that Google is more than a company that provides a search engine.
We can see from Google’s social media that the reputation Google is building for itself now is no longer just a search engine. It is trying to make its C3 higher in many aspects, building the reputation of a tech giant that covers almost everything related to people’s daily lives. If I were Google, I would try to make other areas that I am trying to touch more obvious and accessible to people. Google search is still the service under Google that most people are most
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familiar with nowadays. While it has also proved much competence and makes feedback
channels easily accessible to users, Google needs to prove competence in other areas and make it evident to users as well.
C4 is not a huge problem for the Google search engine, but it is for other Google services which could save Google from becoming a representative word for search engines. Google is trying very hard to involve and encourage people to continue using other services from them.
Take Google Maps for example, Google often encourages people to leave a review by sending invites to users to review the places they have just been to. They also send emails to encourage you that your review is making a difference. This is something Google can continue doing to maintain the loyalty of users to their services other than the Google search engine.
IV. Surveys and Interviews
For surveys to be affective in courts, they not only need to be conducted by surveying experts as the court has implied in the case of Google v. Elliot.69 They also need to meet several requirements to be considered professional, objective and accessible in court.70 Seven criteria decisive of whether surveys are eligible to be applied are as follows: A clear boundary is drawn to specify the scope of the consuming public; A representative sample from the defined
consuming public was chosen to conduct the survey; The questions were designed to be clear and non- misleading; The interview or survey needs to be carried out by experts who have no knowledge of the ongoing litigation; The gathered data is reported in a complete manner; The gathered data is analyzed in acceptable principle standards; and finally, the objectivity of the interview or survey is assured. Failing to meet one or more of these criteria may result in the invalidity of the survey. These criteria may serve as a guideline to surveys used in courts but there is obviously room to argue, for example, how would the plaintiff prove that the expert who conducted the survey knew nothing about the concerned litigation? What are accepted principle standards? Do new statistics software count as an acceptable principle? Many more questions can be put forth as the proposed criteria but this will not be a main point of discussion within this dissertation. They serve as a basic guideline but also reserves room for debate, this may be necessary for surveys used as evidence in courts since every case varies.
The questions asked in the focus groups and the online survey were all designed and executed by myself. The design of this research is based on the marketing research
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methodologies of Professor Chiou.71 Therefore, to conduct a survey or interview with no knowledge of the litigation would be impossible as it is a subject of this research. This is why different methods of research are carried out to make up for this disadvantage in order to reach a result that is as objective as possible. Two focus groups of different ages are carried out as qualitative research to better understand the actual recognition of the consuming public of the Google search engine. An online survey is analyzed as quantitative research. Both are designed for the purpose of discussing whether the Google trademark should have been rendered generic.