San Diego
30 August 2017
Reporter: Barney Dixon

Google trademark dispute could go to SCOTUS


Two members of the public have asked the US Supreme Court to rule on whether ‘Google’ is a generic term that should not be the subject of a trademark.

David Elliott and Christopher Gillespie filed their petition earlier this month, questioning whether the Court of Appeals for the Ninth Circuit erred when it ruled in June that usage of the term ‘google’ as a verb is completely irrelevant to whether the ‘Google’ trademark is valid.

In their petition, Elliott and Gillespie argued that there is “no single word other than ‘google’ that conveys the action of searching the internet using any search engine”.

Gillespie sued Google in 2012 after the company reclaimed 763 domain names—which he registered—that combined the Google trademark with other words and phrases, such as googledonaldtrump.com.

Elliot and Gillespie will argue at the Supreme Court that the Ninth Circuit decided new and important issues of federal trademark law, in a manner inconsistent with the right of the public to appropriate former trademarks for generic use.

Richard Wirtz of Wirtz Law, which filed the petition on behalf of Elliott and Christopher, said: “The appellate court’s decision leaves trademark owners, the public, and the media alike without adequate guidance as to what is and is not allowed when using trademarks as verbs.”

“Our hope is that the high court will recognise what the lower court did not: that outdated precedent cannot be stretched to fit the entirely new issue of verbing trademarks.”

More news
The latest news from IPPro The Internet
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
INTA marks key 2017 achievements in annual report
21 February 2018 | New York | Reporter: Barney Dixon
INTA has highlighted its key achievements in 2017, including ever-increasing membership and a “record-breaking” annual meeting, in its 2017 annual report
UK launches trade secrets consultation
20 February 2018 | London | Reporter: Barney Dixon
The UK IPO has launched a technical consultation on the EU trade secrets directive and its implementation into UK law
BakerHostetler hires IP partner
19 February 2018 | Los Angeles | Reporter: Barney Dixon
BakerHostetler has hired Troy Schmelzer as partner in its intellectual property group
ICANN rejects .corp, .home and .mail
19 February 2018 | California | Reporter: Barney Dixon
ICANN has halted the new gTLD applications for .corp, .home and .mail and agreed to refund applicants the full fee of $185,000
Sheppard, Mullin, Richter & Hampton promotes four to partner
16 February 2018 | California | Reporter: Barney Dixon
Sheppard, Mullin, Richter & Hampton has promoted four intellectual property attorneys to partner across its Shanghai, San Diego and San Francisco offices
Man fined more than £500,000 for counterfeit selling
16 February 2018 | Stafford | Reporter: Barney Dixon
A man who bought counterfeit DVDs from China and sold them as genuine products on eBay has been fined £567,000 following 16 months of imprisonment
Memery Crystal hires IP and gambling partner
15 February 2018 | London | Reporter: Barney Dixon
Memery Crystal has hired Carl Rohsler as partner in its London office