## Facts

- David Elliot used a domain-name registrar to acquire 763 domain names combining “google” with other terms, including brands (e.g., **googledisney.com**), people (e.g., **googlebarackobama.com**), places (e.g., **googlemexicocity.com**), and generic terms (e.g., **googlenewtvs.com**).
- Google Inc. owned two U.S. trademark registrations for **GOOGLE** covering goods and services tied to its search-engine-related software and online search services (the “‘502” and “‘075” marks).
- Google filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) seeking transfer of the domain names; the UDRP panel ordered the domain names transferred to Google.
- Elliot filed suit in the District of Arizona (later joined by Chris Gillespie) seeking cancellation of Google’s two trademark registrations under the Lanham Act, claiming the marks had become generic.
- Plaintiffs argued that the public used “google” as an indiscriminate verb meaning “to search the internet” regardless of which search engine is used, and that this showed genericide.
- Dictionary definitions and media usage reflected that “google” sometimes appeared as a verb, while also identifying “Google” as a trademark or brand; Google’s own usage included occasional indiscriminate references.
- Plaintiffs produced survey evidence; two surveys were excluded due to methodological problems (including counsel involvement), while a third (Berger) survey was considered for the point that many consumers use “google” as a verb.
- The record contained no meaningful evidence that competitors used “google” as the common descriptive name for internet search engines.
- The parties filed cross-motions for summary judgment on whether GOOGLE had become generic and should be cancelled.

## Issues

1. Whether plaintiffs produced sufficient evidence that the **primary significance** of “google” to the relevant public is a **generic name for internet search engines** (or related registered goods/services), warranting cancellation under 15 U.S.C. § 1064(3).
2. Whether widespread use of “google” as an **indiscriminate verb** meaning “search the internet” can, by itself, establish genericide as a matter of law.
3. Whether, on the summary-judgment record, a reasonable jury could find that GOOGLE no longer functions primarily as a source identifier for Google’s registered goods and services.

## Decision

- The court **denied** plaintiffs’ motion for summary judgment seeking cancellation of the GOOGLE registrations.
- The court **granted** Google’s motion for summary judgment on the genericness/cancellation claim, leaving the registrations in place.
- The court held that the genericness inquiry must be framed around the **registered goods and services** (internet-search-related products and services), not merely the general act of searching the internet.
- Even assuming a majority of the public uses “google” as a verb in an indiscriminate sense, the court found that fact alone did not satisfy the **primary significance** test and did not create a triable issue that GOOGLE is generic for internet search engines.

## Legal Principles

- A registered trademark may be cancelled as generic only if “the primary significance of the registered mark to the relevant public” is the **name of the goods or services** (the category) rather than an indicator of **source**. (15 U.S.C. § 1064(3); primary significance test)
- Genericness must be evaluated **in relation to the particular goods and services for which the mark is registered**, not by asking whether the mark is used to describe an activity in the abstract.
- A mark’s grammatical role (noun, verb, adjective) is not determinative; **verb use is evidence** but does not automatically mean the mark is generic.
- Evidence that consumers sometimes use a mark in an “indiscriminate” way does not alone prove genericide; the question remains whether consumers primarily understand the term as a **brand name** for the registered goods/services.
- On summary judgment, even crediting plaintiffs’ evidence and drawing reasonable inferences in their favor, judgment for the moving party is proper when the record cannot support a finding that the mark’s primary significance is generic for the relevant category.

## Conclusion

In *Elliot v. Google Inc.*, the District of Arizona held that plaintiffs failed to raise a genuine dispute that GOOGLE had become the generic name of internet search engines or the registered search-related goods and services. The court ruled that consumer verb usage—“to google” meaning “to search the internet”—did not, standing alone, prove genericide under the primary significance test, and it granted summary judgment to Google while denying cancellation of the trademarks.


Elliot v. Google Inc., 45 F. Supp. 3d 1156 (2014)