On Tuesday, the Ninth Circuit issued its decision in Elliott v. Google, Inc., No. 15-15809 (9th Cir. May 16, 2017), affirming the District of Arizona’s ruling granting Google’s motion for summary judgment that its GOOGLE trademark is not subject to cancellation as generic.
The claim that Google’s mark should be cancelled was made by two individuals who purchased over 700 domain names incorporating the GOOGLE mark. After Google obtained ownership of the domain names through an administrative action in which Google established the domain names were confusingly similar to the GOOGLE mark and had been registered in bad faith, the plaintiffs brought suit seeking to cancel the trademark as “generic.” Under governing law, generic marks are not protectable because, as common descriptive terms, they do not—as trademarks must—identify the source of a product or service. Even trademarks that begin life as seemingly fanciful identifiers for products (such as Aspirin, Cellophane, and Thermos) may fall victim to “genericide,” i.e., become generic over time. In 2014, the parties cross-moved for summary judgment on the issue of genericness, and the District of Arizona granted summary judgment in Google’s favor.
On appeal, the Ninth Circuit held that although the plaintiffs presented substantial evidence that the mark GOOGLE is used as a verb among the general public, “verb use does not necessarily constitute generic use.” Id. at 12. First, the Court held that even if the general public uses the word “google” as a verb, it is only a generic use if the public is referring to an internet search generally, and not referring to conducting a search on the Google search engine specifically. Id. If the general public uses the word “google” primarily to identify a search on the Google search engine, then, as the Court explained, the GOOGLE mark still serves a source-identifying function and its use as a verb is not generic. Id.
Moreover, the Court went on to hold that even if the plaintiffs’ evidence showed that the general public primarily uses the word “google” as a verb referring to the “act of searching on the internet without regard to [the] search engine used,” such evidence is insufficient to prove the mark GOOGLE has become generic in connection with search engines specifically. Id. at 13-14. The Court found that in order to show GOOGLE is a generic word, the plaintiffs were required to show that the “primary significance of the word ‘google’ to the public is as a name for internet search engines generally and not as a mark identifying the Google search engine in particular.” Id. at 13. Here, the evidence included “competing examples of both generic and trademark use” and therefore the plaintiffs failed to meet this burden. Id. at 16.
The Ninth Circuit’s decision in Google’s favor will certainly be seen as a win for prominent brand owners who, ironically, are at risk of becoming victims of their own success as the ubiquity of their trademarks leads to challenges on the basis of genericness.