860 F.3d 1151 (9th Cir. 2017)
Between February 29, 2012, and March 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word “google.”1
Each of these domain names paired the word “google” with some other term identifying a specific brand, person, or product—for example, “googledisney.com,” “googlebarackobama.net,” and “google-newtvs.com.”2
Google, Inc. objected to these registrations and promptly filed a complaint with the National Arbitration Forum.3
The National Arbitration Forum transferred the domain names to Google on May 10, 2012.4
Shortly thereafter, David Elliott filed an action in the Arizona District Court, and Gillespie later joined as a plaintiff.5 Elliott petitioned for cancellation of the GOOGLE trademark on the ground that the word “google” is primarily understood as a generic term universally used to describe the act of internet searching.6
On September 28, 2013, the parties filed cross-motions for summary judgment on the issue of genericness.7 The district court granted summary judgment in favor of Google.8
Elliott appealed to the Ninth Circuit.9 He presented three consumer surveys, examples of alleged generic use by the media and consumers, expert testimony from linguists including Dr. Berger, Dr. Patrick Farrell, and Dr. Allan Metcalf, dictionary definitions providing secondary verb meanings, and an email from Google co-founder Larry Page encouraging recipients to keep googling.10
Google offered a Teflon survey in which a little over 93 percent of respondents classified “Google” as a brand name.11
The district court excluded two of Elliott’s consumer surveys because they were designed and conducted by his counsel, who is not qualified to design or interpret surveys.12 It considered the third survey conducted by James Berger, a qualified expert, in which over half of 251 respondents answered by using the word “google” as a verb when asked how they would tell a friend to search for something on the Internet.13
Elliott also produced examples of media and consumer verb use such as “googled at Wikipedia,” “googled on ebay,” and claims of accessing websites by googling them through non-Google engines.14
Whether the district court misapplied the primary significance test?15
Under the Lanham Act, a claim of genericide must relate to a particular type of good or service.16
No. The district court correctly framed the inquiry around internet search engines because a genericide claim inherently requires linkage to a specific category of goods or services under the Lanham Act's text.17 Elliott's proposed verb-use framing fails because it ignores that requirement and because verb use does not automatically equate to generic use, as Congress recognized that a trademark can name a product while still indicating source.18 The court properly rejected Elliott's semantic argument that only adjective use serves a source-identifying function.19
The district court did not misapply the primary significance test.20
Whether verb use of a trademark automatically constitutes generic use?21
Verb use of a trademark does not automatically constitute generic use.22
No. The court held that verb use does not automatically constitute generic use, drawing on precedent from Coca-Cola Co. v. Overland, Inc. where customer orders for 'a coke' required additional evidence of thought processes rather than proving genericness.23 Elliott's examples, such as T-Pain's lyric to 'google my name,' similarly fail to demonstrate indiscriminate generic intent without further context regarding the speaker's mental reference to search engines generally.24
Verb use of a trademark does not automatically constitute generic use.
Related opinions on this issue
Judge Watford joined the majority opinion but declined to endorse any categorical rule that evidence of indiscriminate verb use is irrelevant as a matter of law.25 He noted that the way the public uses a word as a verb may relate to its use as a noun or adjective.26 Such evidence could potentially inform whether the mark has become the generic name for a type of good or service.27
On this record, however, even the plaintiffs' evidence of indiscriminate verb use was too insubstantial to create a triable issue because dictionary primary definitions, expert concessions, and Google's survey data all pointed to source-identifying use.28
Whether Elliott presented sufficient admissible evidence to create a triable issue of fact as to whether the GOOGLE trademark is generic?29
A party seeking cancellation bears the burden of proving genericide by a preponderance of the evidence.30
No. Elliott's admissible evidence, including the Berger Thermos survey showing verb use by over half of respondents, secondary dictionary definitions, and expert opinions equating verb use with generic use, supported only the inference that the public uses 'google' as a verb in a generic sense.31 That inference alone cannot establish genericide because it does not address primary significance with respect to internet search engines specifically.32 Elliott's other evidence was either excluded or likewise failed to bridge the gap to a jury question on primary significance.33
Elliott did not present sufficient admissible evidence to create a triable issue of fact as to whether the GOOGLE trademark is generic.34
Whether the district court impermissibly weighed the evidence when granting summary judgment for Google?35
At summary judgment a court must not weigh the evidence but must determine whether the nonmoving party has identified sufficient admissible evidence to support a jury finding on the primary significance test for genericide.36
No. The district court properly concluded that Elliott's evidence, even when viewed in the light most favorable to him and assuming majority verb use in a generic sense, could not support a finding of genericide under the primary significance test.37 The court did not weigh credibility or resolve factual disputes.38 It correctly held that the evidence was legally insufficient because it addressed only verb use rather than primary significance regarding internet search engines.39
The district court did not impermissibly weighed the evidence when granting summary judgment for Google.40