## Facts

- Chris Gillespie registered 763 domain names containing “google” (e.g., “googledisney.com”).
- Google initiated a UDRP proceeding and obtained an order transferring the domain names to Google.
- David Elliott and Gillespie then sued in federal court seeking cancellation of Google’s federal trademark registrations for “GOOGLE” under Lanham Act § 14(3), alleging the mark had become generic.
- Plaintiffs’ theory was that the public’s widespread verb use (“I googled it”) showed that “google” had become a generic term for the act of searching the internet, and that verb use constitutes generic use as a matter of law.
- Google argued genericness must be assessed for the specific goods/services covered by the registrations (internet search engines) and that verb use is not dispositive; it also offered consumer survey evidence that “Google” is primarily understood as a brand.
- The district court granted summary judgment for Google; plaintiffs appealed.

## Issues

1. Under Lanham Act § 14(3), whether the primary significance of “google” to the relevant public is a generic name for internet search engines, rather than a mark identifying Google’s search engine.
2. Whether widespread verb use of “google” (“to google”) renders the mark generic as a matter of law.
3. Whether genericness may be assessed at the level of the “act” of searching the internet, or must be tied to a particular category of goods/services (internet search engines).

## Decision

- The Ninth Circuit affirmed summary judgment for Google.
- The court held a genericness (genericide) claim must be evaluated with respect to a particular type of good or service; the correct frame was internet search engines, not the act of searching the internet.
- The court rejected plaintiffs’ rule that verb use equals generic use as a matter of law; verb use can still denote a specific source.
- Applying the primary significance test, the court found plaintiffs’ evidence (media references, dictionaries, anecdotal verb usage) did not create a triable issue that the public primarily understands “google” as a generic name for search engines.
- Google’s consumer survey evidence supported that “Google” is primarily perceived as a brand name, and plaintiffs failed to counter it with sufficient evidence to survive summary judgment.

## Legal Principles

- A registered mark may be cancelled for genericide only if the mark has “become the generic name” of the goods/services for which it is registered, assessed under the primary significance test.
- The primary significance test asks whether the relevant public primarily understands the term as the product category (generic) or as identifying a particular producer/source (trademark).
- Genericness must be determined in relation to a specific goods/services category; abstract framing (e.g., an “act” divorced from the registered services) is improper.
- Use of a trademark as a verb does not, by itself, establish genericness; verb usage may still communicate brand-specific source identification.
- On summary judgment, the challenger bears the burden to present evidence from which a reasonable jury could find that the mark’s primary significance is generic for the relevant goods/services.

## Conclusion

The Ninth Circuit held that “GOOGLE” remained a protectable trademark because plaintiffs did not show that the relevant public primarily understands “google” as a generic name for internet search engines, and widespread verb use alone was legally insufficient to prove genericide.


Elliott v. Google Inc., 860 F.3d 1151 (9th Cir. 2017)