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“Our hope is that the high court will recognise what the lower court did not: that outdated precedent cannot be stretched to fit the entirely new issue of verbing trademarks.”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 trademarks 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
Three-quarters of brands suffer trademark infringement
22 January 2018 | Boston | Reporter: Barney Dixon
Almost three-quarters of brands have been victims of trademark infringement in the past year, according to a new survey from trademark research and protection firm CompuMark
TWiT sues Twitter for trademark infringement
18 January 2018 | California | Reporter: Barney Dixon
TWiT.tv, is suing Twitter for breach of contract, unfair competition and trademark infringement, stemming from a deal the two companies made in 2007
Alibaba refutes Notorious Markets report
15 January 2018 | Hangzhou | Reporter: Barney Dixon
Alibaba has issued a point by point refutation against allegations levelled at its Taobao platform in the US Trade Representative’s 2017 Special 301 Out-of-Cycle Review of Notorious Markets
USTR targets Taobao in Notorious Markets review
12 January 2018 | Washington DC | Reporter: Barney Dixon
US Trade Representative Robert Lighthizer has revealed the findings of his office’s 2017 Special 301 Out-of-Cycle Review of Notorious Markets, including accusations against Alibaba’s Taobao ecommerce platform
Birkenstock terminates relationship with Amazon
15 December 2017 | Neustadt | Reporter: Barney Dixon
Shoe maker Birkenstock has ended its business relations with Amazon EU, accusing the ecommerce company of failing to prevent violations of the law on its marketplace platform
China world’s top trademark filer in 2016
07 December 2017 | Geneva | Reporter: Barney Dixon
China was the world’s top trademark filer in 2016, with the country accounting for 3.7 million applications out of an estimated global total of 7 million
Brexit could cause major financial impact to UK trademark business
05 December 2017 | London | Reporter: Barney Dixon
UK-based trademark lawyers could lose as much as £17 million a year as a direct result of Brexit