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“Our hope is that the high court will recognise what the lower court did not: that outdated precedent cannot be stretched to fit the entirely new issue of verbing trademarks.”

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