860 F.3d 1151
9th Cir.2017Background
- Between Feb 29 and Mar 10, 2012, Chris Gillespie registered 763 domain names containing the word “google”; Google filed UDRP complaints and regained the domains.
- David Elliott (later joined by Gillespie) sued to cancel the GOOGLE trademark, claiming genericide: that “google” is primarily understood as the verb meaning to search the internet.
- The district court granted summary judgment for Google, holding Elliott failed to raise a triable issue that GOOGLE’s primary significance to the relevant public is as a generic name for internet search engines.
- Elliott appealed, arguing (1) the court misapplied the primary significance test by ignoring verb use and (2) the district court impermissibly weighed evidence.
- The Ninth Circuit reviewed de novo and affirmed: genericide claims must target a particular good/service, verb use is not dispositive of genericness, and Elliott’s admissible evidence was insufficient to show primary significance as generic.
Issues
| Issue | Plaintiff's Argument (Elliott) | Defendant's Argument (Google) | Held |
|---|---|---|---|
| Proper framing of primary significance test | Court should ask whether public primarily uses “google” as a verb (i.e., to mean internet searching) | Gen-ericide must be assessed as to a particular good/service (search engines); ask whether public primarily understands GOOGLE as generic for search engines | Court affirmed: inquiry properly framed as whether mark’s primary significance is as a generic name for internet search engines vs. source-identifying mark for Google |
| Whether verb use = generic use | Verb use (e.g., “I googled it”) demonstrates genericness as a matter of law | Verb/noun/adjective grammatical form does not automatically determine whether users have a source in mind | Held: verb use is not dispositive; may be "discriminate" (source in mind) or "indiscriminate" (no source) and cannot alone prove genericide |
| Sufficiency of Elliott’s evidence at summary judgment | Large quantity of examples, surveys, dictionaries, and expert testimony show generic verb use and thus raise triable issues | Much of Elliott’s evidence is irrelevant or inadmissible; the admissible evidence only shows generic verb use and not primary significance as to search engines | Held: admissible evidence insufficient; summary judgment for Google affirmed |
| Admissibility and weight of surveys and examples | Surveys and media/consumer examples demonstrate public usage; should create factual dispute | Two surveys excluded as unreliable (counsel-designed); remaining Thermos survey shows verb use but not primary significance; many disclosed examples excluded for discovery violations | Held: district court properly excluded/unweighted evidence; remaining evidence did not create a genuine issue of material fact |
Key Cases Cited
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005) (summary judgment standard and trademark distinctiveness framework)
- Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327 (9th Cir. 1983) (generic term definition and unprotectability)
- Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 (9th Cir. 1982) (use of mark as noun does not alone show genericness; need evidence of users’ thought process)
- Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143 (9th Cir. 1999) (trademark categories and policing factor in genericide analysis)
- Stuhlbarg Int’l Sales Co. v. John D. Brush & Co., 240 F.3d 832 (9th Cir. 2001) (standards for admissible consumer surveys)
- Ty Inc. v. Softbelly’s Inc., 353 F.3d 528 (7th Cir. 2003) (discussion of the critical step toward genericness and primary significance test)