Why it matters: On May 16, 2017, the Ninth Circuit in Elliott v. Google, Inc. shot down claims that the “GOOGLE” trademark should be canceled for “genericide” based on the argument that the public had appropriated it and generically used it to describe the act of searching the Internet (e.g., “I’ll google it”). The court found that a claim for trademark cancellation based on genericide must be made with respect to a specific type of good or service and not to “the act” of doing something. Furthermore, the court rejected the argument that the use of a trademark as a verb (as opposed to as an adjective) automatically constitutes generic use.

Detailed discussion: On May 16, 2017, the Ninth Circuit in Elliott v. Google, Inc. affirmed a district court ruling on summary judgment that the plaintiffs seeking to cancel the “GOOGLE” trademark for “genericide” had failed to create sufficient triable issues of fact to support their argument that the public had appropriated “google” and generically used it to describe the act of searching the Internet (e.g., “I’ll google it”). The court found that a claim for trademark cancellation based on genericide must be made with respect to a specific type of good or service and not to “the act” of doing something. Furthermore, the court rejected the argument that the use of a trademark as a verb (as opposed to as an adjective) automatically constitutes generic use.

Factual and procedural background: To briefly summarize the facts of the case, over the course of 10 days in early 2012, an individual named Chris Gillespie used a domain name registrar to acquire 763 domain names that paired the word “google” with another specific brand, person or product (such as“googledisney.com,” “googlebarackobama.net” and “googlenewtvs.com”). Google Inc. (Google) promptly objected and filed a complaint with the National Arbitration Forum (NAF), which has the authority to decide certain domain name disputes. Google argued that the use of its name constituted “domain name infringement” or “cybersquatting” in that the domain names were “confusingly similar” to the “GOOGLE” trademark and were registered in bad faith. NAF agreed and transferred the disputed domain names to Google in May 2012.

Shortly thereafter, another individual named David Elliott joined Gillespie (the two hereafter referred to as “Elliott”) in a lawsuit filed in Arizona district court that petitioned for cancellation of the “GOOGLE” trademark under the Lanham Act because it had become “generic”; specifically, Elliott argued that the public “primarily understood” the word “google” (as in “I googled it”) to “be a generic term universally used to describe the act[] of internet searching.” Both parties moved for summary judgment, and the district court ruled in favor of Google, finding that Elliott had failed to create a triable issue of fact that “GOOGLE” had passed into the realm of “genericness.” Elliott appealed to the Ninth Circuit.

Ninth Circuit’s opinion: The Ninth Circuit affirmed the district court’s ruling. The court began its analysis by stating that “[w]e recognize four categories of terms with regard to potential trademark protection: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful terms” and noted that the case before it related to the first and fourth categories that are on the “opposite ends of the spectrum with regard to protectability.” On one end of the spectrum, the court said, lie generic terms that are “‘common descriptive’ names which identify only the type of good ‘of which the particular product or service is a species.’” On the other end lie arbitrary or fanciful marks that “‘employ words and phrases with no commonly understood connection to the product,’” which are “‘automatically entitled to protection because they naturally serve to identify a particular source of a product.’”

The court acknowledged that, over time, a valid trademark may become the “victim of genericide,” giving as examples the marks “ASPIRIN,” “CELLOPHANE” and “THERMOS.” The court said that “[t]he question in any case alleging genericide is whether a trademark has taken the ‘fateful step’ along the path to genericness… The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic… Instead, a trademark only becomes generic when the ‘primary significance of the registered mark to the relevant public’ is as the name for a particular type of good or service irrespective of its source.”

The court said that it has often described the foregoing as the “who-are-you/what- are-you” test:

“If the relevant public primarily understands a mark as describing ‘who’ a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing ‘what’ the particular good or service is, then the mark has become generic. In sum, we ask whether ‘the primary significance of the term in the minds of the consuming public is [now] the product [and not] the producer.’”

The court found that Elliott’s argument that “GOOGLE” had become generic had two fundamental flaws. First, the court said that “a claim of genericide or genericness must be made with regard to a particular type of good or service.” Here, the court said that Elliott’s flaw was claiming the word “google” was generic for “the act” of searching the Internet, not for any specific good or service.

Furthermore, the court said that requiring a claim of genericide to relate to a particular good or service was “necessary to maintain the viability of arbitrary marks as a protectable trademark category.” Defining an “arbitrary mark” as “an existing word that is used to identify the source of a good with which the word otherwise has no logical connection,” the court said that “[i]f there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is ‘arbitrary as applied to soap,’ could be cancelled outright because it is ‘generic when used to describe a product made from the tusks of elephants.’”

The court found that Elliott’s second flaw was the erroneous assumption that “verb use automatically constitutes generic use.” The court rejected Elliott’s argument that “a word can only be used in a trademark sense when it is used as an adjective,” stating that “[o]nce again, Elliott’s semantic argument contradicts fundamental principles underlying the protectability of trademarks.” The court explained:

“the district court aptly coined the terms ‘discriminate verb’ and ‘indiscriminate verb’ in order to evaluate Elliott’s proffered examples of verb use and determine whether they were also examples of generic use. Although novel, these terms properly frame the relevant inquiry as whether a speaker has a particular source in mind. We have already acknowledged that a customer might use the noun ‘coke’ in an indiscriminate sense, with no particular cola beverage in mind; or in a discriminate sense, with a Coca-Cola beverage in mind. In the same way, we now recognize that an internet user might use the verb ‘google’ in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.”

The court next addressed Elliott’s argument that, given the “sheer quantity of evidence” Elliott produced to support the genericide claim, the district court “impermissibly weighed the evidence” when it granted summary judgment in favor of Google. Here, the court found that the district court did not err because “Elliott’s admissible evidence is largely inapposite to the relevant inquiry under the primary significance test because Elliott ignores the fact that a claim of genericide must relate to a particular type of good or service.”