Think
Forward

Alert
Ninth Circuit Confirms GOOGLE Is Not Generic
May 24, 2017

On May 16, 2017, the Ninth Circuit affirmed the district court’s finding that the GOOGLE trademark had not become generic, providing guidance on preventing genericide.  Elliott et al. v. Google, Inc., No. 15‑cv-15809, 2017 US App. LEXIS 8583 (9th Cir. May 16, 2017).  Genericide occurs when the public uses a trademark as a generic name for a particular type of good or service irrespective of its source.  By way of example, “aspirin,” “thermos,” and “escalator” were once protectable trademarks in the United States, but lost their source-identifying function through widespread consumer appropriation.

Background

Beginning in 2012, Chris Gillespie and David Elliott acquired numerous domain names that included the word “google” and another term, such as “googledisney.com,” “googlebarackobama.net,” and “googlewtvs.com.”  Google objected to these registrations and filed a complaint with the National Arbitration Forum, which transferred the domain names to Google.

Elliott filed an action in the federal district court for Arizona, petitioning to cancel Google’s federal trademark registration for the mark GOOGLE on the ground that the word “google” is primarily understood as a generic term to describe the act of Internet searching.

The parties filed cross-motions for summary judgment.  The district court found for Google, granting summary judgment in its favor.  Elliott appealed, raising two arguments:  1) that the district court misapplied the “primary significance” test when assessing genericness and failed to recognize the importance of widespread verb use of “Google”; and 2) that the district court impermissibly weighed the evidence.

Decision

The panel held that the district court did not err in its formulation of the relevant inquiry under the primary significance test, which is whether the registered mark has become generic for a particular type of good or service.  The court thus rejected Elliott’s argument that the word “google” has become generic for the act of searching the internet, stating that the focus instead should be whether the mark had become generic for internet search engines. 

The court further stated that verb use does not automatically constitute generic use.  The court cited the district court’s distinction between a consumer’s use of the verb “google” in an indiscriminate sense and use in a discriminate sense, with the Google search engine in mind.  Additionally, contrary to Elliott’s argument, a word does not have to be used as an adjective to maintain its trademark status.  The court looked to Congress’ amendment of the Lanham Act, which recognized that one may use a trademark as a name for a product, but still use the trademark with a particular source in mind.  S. Rep. No. 98-627, at 5 (1984). 

The court further affirmed the district court’s determination that Elliott’s evidence was insufficient to establish genericide, because under the primary significance test, the claim of genericide must relate to a particular type of good or service, in this case internet search engines.  Evidence that supports only an inference that a majority of the public uses the verb “google” in a generic sense fails to support Elliott’s claim of genericide.

Takeaways

While the Ninth Circuit rejected a theory that only adjective use constitutes trademark use, use of a trademark as an adjective will help avoid genericide because it will encourage the public to view the trademark as a source identifier rather than a particular good, service, or action.

Contact Us

If you have any questions about the Court’s decision or how it may impact your business, contact the Brinks Trademark Practice Group.