In a well-reasoned opinion, the 9th Circuit Court of Appeals recently held that the GOOGLE trademark has not suffered death by genericide – even if the public uses it as a verb for searching the Internet.
The case before the court sprang from the registration of 763 domain names that incorporated the term GOOGLE. After losing a domain name dispute arbitration, the domain name owners sued to have various trademark registrations for GOOGLE cancelled, claiming that the mark had become generic for the act of searching the Internet. The court rightly observed that a claim of genericide must always relate to specific goods or services, and that use of “google” as a verb for searching the Internet was not sufficient evidence that GOOGLE had become generic for “search engine services” or any other goods or services.
The general rule of thumb is that trademarks are best thought of as “adjectives” that modify a generic noun. But this “part of speech” approach is not determinative to whether a mark has become generic. And while for years Xerox sought to instill in the public’s mind the trademark significance of XEROX by stating that “not even Xerox can xerox,” evidently Google can google without destroying the mark.