what a lot of folks understand is that we use common terms to refer to things, actions verbs and nouns for objects, so things that were trademarked in the past; such as escalator, aspirin, things like that. Those are objects, obviously. They became commonly used by the public and so became actually the word to use to refer to that object. So, here we have a situation where my client, our clients, I should say, are looking at the word Google and have recognized the fact or come to the realization that the public is using that term in a generic sense, really using it to refer to a search, to conduct a search, to search for something, whether it be on the Internet or elsewhere.
Matt: Hi, it's Matt Plessner here for Trademark Law Radio. Welcome back. Today, we are joined by Richard Wirtz and Tom Foster, both from the Wirtz Law Office and TD Foster in San Diego, California, both of them joining us right now. How are you guys doing today?
Tom Foster: Very good. Thanks for having us.
Richard Wirtz: Hello, Matt.
Matt: Well, thank you very much for being here. Now, let's start off by talking a little bit about this Google. Google is obviously a very trademark name. One of the most trademarks out there. So, if one of you could please tell me who are your clients, first of all, and why do they register 700 plus domains that contain the word Google in them?
Tom Foster: Well, I'll tell you, our clients are common people. Just like you and me, they have dreams for businesses and this is one of their initial forays into getting domain names, and they happened upon the adoption of Google plus another term. It's not like they've been at this very long, but they're just like you and me and they have some good plans for these marks, legitimate plans for these domain names, I should say.
They did repeat the fact that our client was registering over 750 domains where the first word was Google, and that's what they were taking umbrage to. Also, another additional terms beyond that, a lot of them generic terms like city names, like Hong Kong or Tokyo, but also celebrity names like George Clooney, etc. Obviously, Google was protecting their trademark. That was their primary issue.
They pointed to their trademark registrations that they have at the U.S. Patent and Trademark Office plus others around the world as a basis for their complaint. So, they were looking to have the transfer of all those domain names over to Google.
Matt: Now, with this Google thing, obviously, we talk about generic trademarks, and obviously things like Google or things like Nike, these aren't generic. Could you please tell us a little bit about what it means to be like, mark a generic trademark?
Tom Foster: Well, what a lot of folks understand is that we use common terms to refer to things, actions verbs and nouns for objects, so things that were trademarked in the past; such as escalator, aspirin, things like that. Those are objects, obviously. They became commonly used by the public and so became actually the word to use to refer to that object. So, here we have a situation where my client, our clients, I should say, are looking at the word Google and have recognized the fact or come to the realization that the public is using that term in a generic sense, really using it to refer to a search, to conduct a search, to search for something, whether it be on the Internet or elsewhere.
So, that's sort of the direction we're looking at with our view of the word Google these days. Obviously, we're looking to seek the canceling of Google's trademark registrations for those similar services, related Internet services.
Richard Wirtz: David Elliott purchased these domains on the account that was owned by Chris Gillespie. So, in the ICANN dispute or the NAF forum, the name of the plaintiff or the accused was Gillespie, but when we filed in federal court to stop the transfer as a result of the ruling at the NAF, we filed in the appropriate name of Mr. Elliot.
Matt: What are the defenses that Mr. Gillespie raised in reply to Google's complaint, and what actions did he take to challenge Google in the rights for the Google mark?
Richard Wirtz: Well, what happened a similar defense or a similar argument was made at the first level, and that was that the Google trademark had become genericized, which means that it's basically been used as a verb. However, the jurisdiction of that first venue did not permit them to rule on that issue, and so they sort of deferred to the registration as being the controlling issue. The law provides that in that instance the party that believes that the mark has become generic can file in a court of appropriate jurisdiction. That is what Mr. Elliot did. He filed in the United States District Court in Arizona to seek the cancellation, and that process terminated the attempted transfer by Google of all those names that were owned by Mr. Elliot.
Matt: Now, Richard and Tom, did either of you anticipate the national forum's decision for awarding of all of Mr. Gillespie's Google formative domains to Google?
Tom Foster: Well, in a lot of ways that was the expected decision. The forum has a limited scope of discovery. Basically, they rely upon the party that has the federal registration for the mark, in which this case is Google, is more than likely going to win. There are very few cases where a party that has an identical mark does not win. So, that was sort of, I don't want to say a forgone conclusion, but we saw it tilting heavily in Google's favor at that stage, but obviously realizing that the weakness of their case being that the mark is generic, or we believe it will be found to be generic. Let us to then proceed onto . . . or make plans to proceed with the federal court dates.
Matt: And for those of you who have been listening to us for a while, I've been talking with Enrico recently about the GoDaddy which, of course, is kind of a go to for a lot of people who want to register these trademarks. GoDaddy is also the registrar for Mr. Gillespie's domains as well. He's stated that it's not going to transfer them pending a court order. What would you say led them to stop the transfer to Google?
Richard Wirtz: It was a procedural function. The rules by which the domain name registrars operate require it to not transfer the domains when they're served with a federal complaint that addresses the same issue. And so, by filing the federal case, the United States District Court case in Arizona, GoDaddy, by its rules, held the domains in the name of Mr. Gillespie until there's a ruling by the court in the case we filed.
Matt: All right, and what leads, I guess, do your clients believe that you can prove that the term Google is, in fact, generic?
Tom Foster: Well, rather than focusing on, let's say, consumer surveys and things like that, I think it's pretty well an everyday occurrence that you'll come across the use of the term Google on television, in the press, in books, to describe a search function, and I think it's going to be that kind of evidence that's going to be the direction that going to actually sway a jury or judge in this case not to make a decision that the term Google has now fallen into the public domain as a generic verb.
Matt: Well, I want to thank you both once again for being here with us. One last thing before we call time here, what do you guys hope to accomplish with this federal lawsuit?
Richard Wirtz: The federal lawsuit has one focus, and it's to seek a federal judge's adjudication that the term or the trademark Google has now become generic here in the United States.
Matt: Well, thank you very much and good luck to the both of you.
Richard Wirtz: Thank you, Matt. We appreciate the time.
Tom Foster: Thank you.
Matt: And we appreciate you being here. Again, that was Richard Wirtz and Tom Foster from the Wirtz Law and TD Foster from San Diego, California. They joined us by Skype here today, and join us next time on Trademark Law Radio. I'm Matt Plessner.
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.