Someone’s Got Googly Eyes – Complaint Filed For Cancellation of “Google”

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On May 21, Google was sued by an individual who purchased and registered 750 domain names incorporating the term “google” (e.g.  googlestarbucks.com, googlemcdonalds.com, googleeagle.com, googledemocrats.com, googlerepublicans.com…you get the idea).  The complaint filed by David Elliott can be found here (thanks to Jeff John Roberts of paidContent.org for the link).   Interestingly, Mr. Elliott is named as a third-party beneficiary of Chris Gillespie, who lost a dispute with Google before the National Arbitration Forum (NAF) over the domains on May 10 and who currently has two cancellation proceedings pending before the TTAB.  Perhaps the lawsuit filing was an attempt to stall transfer of the 750 domain names to Google as a result of the NAF decision, which was scheduled to occur on May 24.

All the potential pitfalls for the plaintiff aside, I am most curious about any evidence Google may have to provide to support an argument that “google” is not a generic mark.   “A generic mark describes a product in its entirety and, therefore, neither signifies the source of goods nor distinguishes the particular product from other products on the market.” George & Co. LLC v. Imagination Entertainment Ltd., 575 F. 3d 383, 394 (4th Cir. 2009) (internal citations omitted).  The Oxford Dictionary lists “google” as a verb meaning “search for information about (someone or something) on the Internet, typically using the search engine.”  Note it says “the search engine” not “a search engine” ( a patent attorney pays a surprising amount of attention to “a”s and “the”s).  The definition doesn’t refer to any search engine, but specifically the self-referenced Google search engine.  This subtlety may work in Google’s favor, especially if supported by survey evidence.   When someone tells me I should “google {insert at least temporally interesting word or phrase here},” I use Google Search.  Not Yahoo, not Bing, not Ask Jeeves (is that butler retired?), not Altavista.  Google.  But then again, perhaps the asker does not care what search engine I use, just that I conduct an internet search to answer the burning question of the day.  It would be interesting to see the survey evidence that would support that the public’s understanding is to use the Google search engine and not internet searching generally.

Fun fact (which I googled) – Google has been actively policing the mark from becoming generic for almost a decade now, when it first sent a letter to an online dictionary for adding a definition of “google.”