The impact of Google on our society in the recent years has been a remarkable one. Indeed, the term “googling” someone or something has now carved a niche for itself in common parlance, and as such has been included in the latest edition of the Petit Larousse in France. Nonetheless, “google” is and will always be a trademark in the first place, as recently emphasized by a Court of Justice in the US.[1] Although “google” is commonly used as a verb in the US, the District Court for the State of Arizona drew attention to the fact that its primary purpose is for commercial use.
In March 2012, David Elliot and Chris Gillespie registered nearly 760 domain names, including all the term “google”, such as googledisney.com, googlebarackobama.net and googlemexicocity.com. Google Inc. first initiated private arbitration under the UDRP rules (Uniform Domain-Name Dispute-Resolution Policy) where it was ordered that the domain names be transferred unto Google Inc. The appellants, David Elliot and Chris Gillespie, argued that the term “google” referred to a verb rather than to services offered by the Californian Company. As a result, they filed suit seeking no less than the annulment of the Google trademark. The latter entered a counter claim alleging trademark dilution, cybersquatting and unjust enrichment.
The Court dismissed the appellants’ contentions and found that the primary meaning of “google” cannot be a verb. The use of “google” as a verb does not remove the rights conferred upon the company of its globally known trademark. Moreover, to justify its stance, the court stated that Google primarily refers to an Internet search engine for most people. In this respect, Google is the first search engine in the United States and France. Accordingly, the District Court held that “google” could not be a generic term.
[1] Court for the District of Arizona, Elliot v. Google Inc, 10 September 2014.