The US Court of Appeals for the Ninth Circuit made a point to remind trademark litigants of the relevant laws and policies pertaining to trademark “genericide” when it sustained summary judgment in favor of ubiquitous search engine provider Google after a third party sought to cancel the registered GOOGLE trademark on grounds that the mark had become generic. David Elliott v. Google, Inc., Case No. 15-15809 (9th Cir., May 16, 2017) (Tallman, J) (Watford, J, concurring).

After Chris Gillespie registered 763 domain names that included the word “GOOGLE” paired with other terms, brands or personal names, Google filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) alleging that the domain names were registered in bad faith. The arbitration forum agreed that the numerous domains had been registered in violation of the UDRP and transferred the domains to Google. Following the UDRP decision, David Elliott, later joined by Gillespie (together, Elliott), filed an action petitioning the district court to cancel the registered GOOGLE trademark under the Lanham Act, which allows for cancellation of a registered trademark if the mark is primarily understood as a generic name for the goods or services for which it is registered. Elliott argued that the word “google” is now primarily understood as “a generic term universally used to describe the act[] of internet searching.”

Both parties filed motions for summary judgment on the issue of genericness. Elliott’s motion argued that the public’s use of the word “google” as a verb in familiar statements, such as “I googled it,” constitutes generic use of the trademark as a matter of law. In granting summary judgment in favor of Google, however, the district court agreed with Google’s framing of the issue, focusing on search engines rather than the act of searching, and determined that Elliott failed to present sufficient evidence that the word “google” is primarily understood as a generic name for search engines. Elliott appealed

On appeal, Elliott alleged that the district court misapplied the genericide “primary significance” test under the Lanham Act and failed to recognize the importance of verb use of the GOOGLE trademark. Rejecting Elliott’s arguments, the Ninth Circuit outlined what it means for a trademark to be generic and the appropriate test for determining whether a trademark has taken the “fateful step” down the path to genericness.

As the Ninth Circuit explained, under US trademark law generic terms are not protectable as trademarks because they do not identify the source of a product or service. In this regard, a valid trademark may eventually be deemed “generic” when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, and when such use of a mark becomes its “primary significance” to the relevant public.

The court then elaborated on what it regarded as “fundamentally flawed” arguments set forth by Elliott on appeal, emphasizing that the plain language of the Lanham Act requires that a claim of genericide relate to a particular type of good or service (in this case, internet search engines), and confirming that verb use does not automatically constitute generic use.

In reviewing Elliott’s evidence, which included secondary dictionary definitions, expert testimony, a survey, and use of the term “google” by media and consumers (the lyrics to at least one rap song were referenced), the court explained that even if it is assumed that the public uses the verb “google” in a generic and indiscriminate sense, such evidence demonstrates nothing about how the public primarily understands the word “google” with regard to the product or service at issue, namely, internet search engines. In other words, verb use does not automatically constitute generic use, and use of the word “google” as a verb to refer to the act of searching on the internet does not mean that the public understands the word “google” to mean any and all search engines. Moreover, the court found that “not a single competitor calls its search engine ‘a google,’” and the consuming public recognizes and refers to different internet search engines.

Thus, because Elliott failed to present evidence sufficient to support a jury finding that the relevant public primarily understands “google” as a generic name for internet search engines and not as a trademark identifying the GOOGLE search engine in particular, the Ninth Circuit affirmed the district court’s grant of summary judgment in favor of Google.

In his concurrence, Judge Watford opined that the court need not decide whether evidence of “indiscriminate” verb use of a trademark could ever tell a jury whether the public primarily thinks of a mark as a generic name for a type of good or service, and declined to join the opinion to the extent it may be read to foreclose the consideration of such evidence of verb usage as a matter of law.