Takeaway: The Ninth Circuit held that GOOGLE remains as a viable and protectable trademark and has not been genericized the way terms like KLEENEX have.
In David Elliott et al. v. Google, a Ninth Circuit Court of Appeals panel affirmed the district court’s summary judgment in favor of Google in an action that sought to cancel the GOOGLE trademark on the grounds that it has become generic.
Plaintiffs used a domain name registrar to obtain over 700 domain names with the word “google” in them such as googledisney.com and googlebarackobama.net. Google, Inc. objected to these registrations and filed a complaint with the National Arbitration Forum (“NAF”) which is authorized to decide certain domain name disputes. The NAF sided with Google that the domain names are confusing similar to Google’s trademark for GOOGLE and were registered in bad faith.
Consequently, Plaintiffs brought an action in Arizona District Court for a petition to cancel the GOOGLE trademark on the grounds that the word google is primary understood as “a generic term universally user to describe the act[] of internet searching.”
Plaintiff argued that the majority of the relevant public use the word “google” in the form of a verb, such as “google it” as to mean to search something online. Google argued that Plaintiff failed to present sufficient evidence to support a jury finding that “google” was a generic name for internet search engines. The Ninth Circuit reviewed the district court’s grant of summary judgment de novo and viewing the evidence in the light most favorable to Plaintiffs and asks “whether there are any genuine issues of material fact and whether the district court correctly applied the relevant substantive law.”Plaintiff argued that the majority of t
The Ninth Circuit held that the relevant substantive law in this case is the “who-are-you/what-are-you” test under Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005). “If the relevant public primarily understands a mark as describing “who” a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing “what” the particular good or service is, then the mark has become generic.”
The court concluded that Plaintiffs’ were flawed in their reasoning because Plaintiffs failed to understand that a claim of “genericness” must always relate to a particular type of good or service and that verb use does not automatically constitute generic use. The court agreed with the lower court that Plaintiff failed to supply sufficient evidence that indicates that the relevant public associates the word “google” as a generic name for all internet search engines.
