On May 16, 2017, the Ninth Circuit affirmed Google Inc.’s summary judgment win in a lawsuit that sought to cancel the GOOGLE mark on the ground it has become generic.

In early 2012, David Elliot registered 763 domain names that included the word “google.” Google filed and won a UDRP proceeding that found the domains had been registered in bad faith, and ordered transfer of the domains to Google. Elliot then filed suit in district court, petitioning to cancel the GOOGLE trademark on the ground that the word “google” is primarily understood by the public as a generic term used to describe the act of internet searching. At summary judgment, Google argued that Elliot had failed to present sufficient evidence to support such a finding. Elliot, on the other hand, argued that the majority of the relevant public uses “google” as a verb, and verb use constitutes generic use as a matter of law. The district court sided with Google.

On appeal, the dispute boiled down to the proper inquiry under the “primary significance” test. According to Elliot, rather than focus on whether the public primarily understands the term “google” as a generic name for internet search engines or as a mark identifying Google’s search engine specifically, the proper inquiry should have been whether the relevant public uses the word “google” as a verb. The Ninth Circuit disagreed. The text of the Lanham Act makes clear that “a claim of genericide or genericness must be made with regard to a particular type of good or service,” which Elliot did not do. This requirement maintains the viability of arbitrary marks as a protectable trademark category; otherwise, even though IVORY is arbitrary as applied to soap, the mark could be cancelled simply because it is generic for products made of elephant tusks. Further, though not categorically irrelevant, “verb use does not automatically constitute generic use.” An internet user might use the verb “google” with Google’s search engine or with no search engine in mind. In short, evidence of generic use in one setting needs to be accompanied “by evidence regarding the primary significance of the mark as a whole.”

Elliot also argued that the district court must have impermissibly weighed the evidence in light of the “sheer quantity” of evidence he had produced to support his claim. The Ninth Circuit was unpersuaded. At summary judgment, the district court had drawn the favorable inference that the majority of the public uses the verb “google” to refer to searching the internet without regard to the search engine used. But this inference alone was insufficient to support a jury finding of genericide. The court stated: “Even if we assume that the public uses the verb ‘google’ in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines.” Fatally for Elliot, almost all of his evidence related only to the public’s use of “google” as a verb and merely supported the inference already drawn by the court. By contrast, Google submitted a survey showing that consumers classified “Google” as a brand name, rather than a common name. The court concluded, “Elliot cannot survive summary judgment based on ‘sheer quantity’ of irrelevant evidence.”

The case is Elliott v.Google, Inc., Case No. 15-15809 (9th Cir.).