In an important “genericide” trademark suit that threatened to deprive Google of one of its most valuable assets – the Google trademark - Cooley achieved a significant victory that prevented the company’s billion-dollar brand from falling victim to its own success.
The mark was challenged by two individuals who attempted to register over 700 domain names incorporating the Google trademark. We successfully fought those registrations under the Uniform Domain Name Dispute Resolution Policy and forced all of the domains to be transferred to Google. Plaintiffs then sought to cancel the mark, claiming that it is generic because consumers use the term "google" as a verb when describing an internet search.
Less than a month before trial, a District of Arizona judge granted Cooley's summary judgment motion, clearing Google on all counts. The court found that the Google trademark is not generic and remains a valid and subsisting trademark for Google's world-famous search engine. The court understood that even though the "Google" term is often used as a verb, most internet users understand Google as designating the source of a particular search engine.
The district court win prompted plaintiffs to appeal. In May 2017, the Ninth Circuit Court of Appeals delivered a complete victory to Google, unanimously affirming the lower court’s summary judgment ruling. The decision was named a top 5 ruling of 2017 by Law360.
