David Elliott v. Google Inc.
123 U.S.P.Q. 2d (BNA) 1037, 860 F.3d 1151, 2017 U.S. App. LEXIS 10547 (2017)
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Rule of Law:
A trademark does not become generic merely because the public predominantly uses it as a verb. To prove genericide, a party must show that the primary significance of the mark in the minds of the consuming public is the name for the class of goods or services, not merely the name of an action.
Facts:
- Between February and March 2012, Chris Gillespie acquired 763 domain names that included the word 'google' paired with other terms, such as 'googledisney.com'.
- Google, Inc. objected to these registrations and filed a complaint with the National Arbitration Forum (NAF), which handles domain name disputes.
- Google argued that Gillespie's domain names were confusingly similar to its GOOGLE trademark, were registered in bad faith, and constituted 'cybersquatting'.
- The NAF agreed with Google and ordered the transfer of the 763 domain names to Google, Inc.
- Following the NAF decision, David Elliott and Chris Gillespie initiated an action seeking to cancel the GOOGLE trademark.
- Elliott and Gillespie asserted that the word 'google' had become a generic term universally used to describe the act of internet searching.
Procedural Posture:
- David Elliott and Chris Gillespie filed an action in the U.S. District Court for the District of Arizona, petitioning for cancellation of the GOOGLE trademark.
- The parties filed cross-motions for summary judgment on the issue of genericness.
- The district court granted summary judgment in favor of Google, Inc., ruling that Elliott failed to create a triable issue of fact.
- Elliott, as the appellant, appealed the district court's grant of summary judgment to the U.S. Court of Appeals for the Ninth Circuit, with Google, Inc. as the appellee.
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Issue:
Does the public's widespread use of the word 'google' as a verb to describe the act of searching the internet render the GOOGLE trademark generic for internet search engines?
Opinions:
Majority - Tallman, Circuit Judge
No, the public's widespread verb use of 'google' does not render the GOOGLE trademark generic. A claim of genericide must relate to a particular type of good or service—in this case, internet search engines—not an action like 'searching.' The court reasoned that verb use does not automatically constitute generic use. Applying the 'primary significance' test, the court must determine if the public primarily understands the mark as identifying the producer ('who') or the product category ('what'). Elliott's evidence, which focused almost entirely on the verb usage of 'google,' was insufficient to create a triable issue of fact that the public primarily understands the word 'google' as a generic name for all internet search engines rather than as a mark identifying Google's specific search engine.
Concurring - Watford, Circuit Judge
No, the GOOGLE trademark is not generic. The author agrees with the majority's conclusion because Google produced overwhelming evidence that the public understands 'Google' as a trademark, while the plaintiffs' evidence of indiscriminate verb use was insubstantial and could not convince a rational jury. However, the author writes separately to express hesitation about the majority's implication that evidence of indiscriminate verb use is categorically irrelevant. While irrelevant on this record, such evidence might be relevant in a future case to help determine whether the public also thinks of the mark as the generic name for the type of good or service.
Analysis:
This decision significantly clarifies the high evidentiary bar for proving 'genericide,' particularly for famous marks that have entered the public lexicon as verbs. The court established that evidence of verbification alone is insufficient; a challenger must prove that the mark's primary significance as a noun has shifted from identifying a specific source to naming the entire product category. The court's introduction of a distinction between 'discriminate' and 'indiscriminate' verb use provides a new analytical tool for future genericide cases. This ruling strengthens protections for famous trademarks against cancellation claims based solely on their popular usage as verbs, making it harder to cancel marks like 'Xerox' or 'FedEx' on similar grounds.
