Wednesday, May 17, 2017
Ninth Circuit Rejects ‘Genericide’ Challenge Seeking Cancellation of Google Trademark
By KENNETH OFGANG, Staff Writer
Google is not a generic name for Internet search engines, the Ninth U.S. Circuit Court of Appeals ruled yesterday, rejecting a suit in which the plaintiffs sought to cancel the GOOGLE trademark.
The panel affirmed summary judgment in favor of Google, Inc. in a suit by two men who had previously lost a “cybersquatting’ dispute with the company over more than 700 domain names containing the word “google.”
David Elliot and Chris Gillespie sued in U.S. District Court in Arizona in 2012, less than two weeks after the National Arbitration Forum awarded Google the 763 domain names registered by Elliot “using…Gillespie’s GoDaddy.com account,” including “googledisney.com” and “googlebarackobama.com.” They asked the district court for an order cancelling the trademark on the ground that it had passed into “genericness,” much as aspirin, cellophane, and thermos had in an earlier era.
“The term ‘GOOGLE,’ is, or has become, a generic term universally used to describe the action of internet searching with any search engine, which cannot serve as a trademark to the exclusion of others,” the two said in their complaint.
On cross-motions for summary judgment, however, U.S. District Judge Stephen McNamee sided with Google on its primary contention—that no matter how “google” is used as a verb, the public understands the trademark to refer to the company’s search engine and no others.
Judge Richard Tallman, writing for the Ninth Circuit, agreed that there was no evidence that would support a finding that the mark had become generic, and that Google was entitled to summary judgment.
“Over time the holder of a valid trademark may become a ‘victim of’ genericide,” he wrote. “Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of the source.”
But a mark doesn’t become generic just because the public sometimes uses it as a product name, Tallman said. Under the Lanham Act, he noted, a trademark only becomes generic when the “primary significance of the registered mark to the relevant public” is as the name of a particular type of good or service.
The Ninth Circuit, he noted, has referred to this as the “who are you/what are you” test.
If the mark is understood as describing “who” it signifies, it is not generic. But if the public mostly think the mark describes “what” product or service is being supplied, then genericide has occurred, the judge said.
The plaintiffs’ argument that the district judge should have considered their evidence of verb use as creating a triable issue of fact is “fundamentally flawed,” Tallman said, because it fails “to recognize that a claim of genericide must always relate to a particular good or service.” McNamee, in granting summary judgment, properly focused on the product or service associated with the mark—the search engine—and not “the act” of searching the web.
“Because a claim of genericide must relate to a particular type of good or service and because verb use does not necessarily constitute generic use, the district court did not err when it refused to frame its inquiry as whether the relevant public primarily uses the word ‘google’ as a verb,” Tallman wrote. “Moreover, the district court correctly framed its inquiry as whether the primary significance of the word ‘google’ to the relevant public is as a generic name for internet search engines or as a mark identifying the Google search engine in particular.”
Most of the evidence presented by the plaintiffs, the appellate jurist went on to say, was irrelevant because it related only to verb use. And the evidence that was relevant, such as a consumer survey showing that most respondents would ask someone to search for something on the Internet by requesting that they “google” the information, proved too little, he said.
He rejected the claim that Google itself has used the word generically, for which the plaintiffs offered an email from Larry Page, encouraging recipients to “[h]ave fund and keep googling!” This was merely another example of verb use, Tallman said.
“Elliott has not shown, nor is it likely that he could show, that the cofounder of Google had no particular search engine in mind when he told recipients of the ‘Google Friends Newsletter’ to ‘keep googling.’”
Chief District Judge Louis Guirola Jr., of the Southern District of Mississippi, sitting by designation, joined the opinion. Judge Paul Watford concurred separately, calling the majority opinion “well-reasoned,” but arguing that it was unnecessary “to resolve whether evidence of indiscriminate verb use is categorically irrelevant in an action alleging that a trademark has become generic.”
In this case, he said, “no rational jury could find in the plaintiffs’ favor even taking into account the flimsy evidence of indiscriminate verb use they produced.”
The case is Elliot v. Google, Inc., 15-15809.
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