David Elliott v. Google, Inc.

Summary

The Ninth Circuit affirmed summary judgment for Google in an action seeking cancellation of the GOOGLE trademark on grounds of genericness or genericide. The court held that a genericness claim must concern a particular type of good or service and that use of “google” as a verb does not automatically constitute generic use. The court concluded that the plaintiffs’ evidence was insufficient to show that the primary significance of GOOGLE to the relevant public was a generic name for internet search engines rather than a source-identifying mark.

Holdings

1. A claim that a trademark has become generic must relate to a particular type of good or service. The district court therefore correctly focused on whether GOOGLE is generic for internet search engines rather than whether it describes the act of searching the internet generally.
2. Use of a trademark as a verb does not automatically constitute generic use. Verb use may be discriminate, referring to the trademark owner's particular product or service, or indiscriminate, referring to a type of product or service generally.
3. The plaintiffs' admissible evidence was insufficient to support a jury finding that the primary significance of “google” to the relevant public was a generic name for internet search engines rather than a mark identifying Google's search engine. Summary judgment for Google was therefore proper.
4. The district court did not improperly weigh the evidence when it granted summary judgment for Google because the plaintiffs' admissible evidence was largely irrelevant to the controlling primary-significance inquiry and did not support a reasonable jury finding of genericness.

Questions Presented

1. Whether the district court applied the correct primary-significance inquiry by evaluating whether GOOGLE is generic for internet search engines rather than whether the public uses “google” as a verb for searching the internet.
2. Whether verb use of a trademark automatically constitutes generic use.
3. Whether the plaintiffs presented sufficient admissible evidence to create a genuine issue of material fact on genericness or whether the district court improperly weighed the evidence in granting summary judgment.

Disposition

affirmed