David Elliot & Chris Gillespie v. Google, Inc. (Court of Appeals for the Ninth Circuit)

Presiding :

Richard C. Tallman and Paul J. Watford, Circuit Judges and Louis Guirola, Jr. Chief District Judge

Word/Mark argued to be generic: Google.

Background :

It is imperative to note the surrounding facts leading to this appeal in order to adequately understand the Courts analysis of a ‘generic mark’. This Appeal stems from a decision by the National Arbitration Forum (NAF) where the registration of certain domain names of the Appellant paired with the word “google” – such as, googledisney.com, googlebarackobama.com and 761 other such names was objected to by Google, Inc. The NAF ruled in favour of the Respondents to this appeal.

Thereafter, David Elliott and Chris Gillespie appealed to the Arizona District Court for cancellation of the Google trademark under the Lanham Act. The act itself provides under 15 U.S.C. § 1064(3) for cancellation of a registered trademark if it is understood as a generic name. The arguments of the Appellants & Respondents herein in the District Court shall be dealt with subsequently but the Court gave a summary judgment in favour of Google, Inc. this has led to the instant appeal.

Arguments of the Appellants :

District Court –Prior to the current appeal, the Appellants argued in the District Court that Google is primarily understood as a generic term universally used to describe the act of internet searching. The motion for summary judgment included the following:

  1. Majority of the public uses “Google” as a verb – by saying “I googled it,”
  2. The verb use constitutes generic use as a matter of law.

In the instant Appeal

On Appeal Elliott argued that the district court misapplied the primary significance test and failed to recognize the importance of verb use and that the court impermissibly weighed evidence in granting summary judgment. It was contended that the district court erroneously framed the 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 when the court should have framed the inquiry as whether the relevant public primarily uses the word “google” as a verb.

Arguments of theRespondent :

In response the the Appellants argument that the word ‘Google’ had turned generic due to the fact that it was being used as a verb by the general public, Google Inc. raised the following contentions; a) Verb use does not automatically constitute generic use, b) There was no triable issue of fact as to whether ‘Google’ was a generic mark due to the fact that Elliott failed to present sufficient evidence to support the fact that the public understands the word as being a generic name for internet search engines. The District Court agreed with these submissions in granting a summary judgment in favour of it. The same submissions were maintained on appeal to the circuit Court.

Decision of the Circuit Court :

The Court affirmed the summary judgment of the district Court. It was noted by Justice Tallman that the proprietor of an arbitrary mark may become a victim of genericide of the mark. For example, Aspirin, Thermos etc. A trademark only becomes generic when the primary significance of the registered mark to the relevant public is as the name for a particular type of good or service irrespective of its source. ‘Google’ was identified as an arbitrary mark by the Court and hence the claim of genericide must relate to a specific type of good which the Appellants failed to establish.

With regards to the claim that the usage of the mark as a verb constitutes genericide, the Court held that such an argument contradicted the fundamental principles underlying the protectability of Trademarks. It was held that a Trademark can serve a dual function – naming a product while at the same time indicating its source. Since Google, Inc. offers a unique service to its customers, usage of the mark in this case serves as identification of the service itself. The Court rejected the Appellants contention that only adjective use constitutes trademark use relying on the Coca-Cola v. Overland, Inc. case.

The difference between “discriminate verb” and “indiscriminate verb” which was aptly highlighted by the District Court was reiterated by the Court in this appeal. The Court also held that the Appellants admissible evidence is largely inapposite to the relevant inquiry under the primary significance test because they ignore the fact that a claim of genericide must relate to a particular type of good or service. The burden of proof lies on the party alleging a genericide by preponderance of evidence. The Appellants evidence included transcripts which contained usage of the mark as a verb by the media and the public as a whole. However, as explained earlier, this merely does not constitute genericide of a trademark. Furthermore, the Appellants did not present any examples where “Google” is defined as a generic name for internet search engines. While the Court did concede that use of a mark in the generic sense by the holder itself qualifies as genericide, it found that in this case there was a lack of sufficient evidence to prove Google, Inc’s. usage in such a manner. The Court went on to opine that in order to show that there is no efficient alternative for the word “google” as a generic term, the Appellant must show that there is no way to describe “internet search engines” without calling them “googles.”

Analysis :

The Court in the instant case kept in mind the object for the enactment of the Lanham Act. While the primary purpose of a trademark is source identification for the consumer, the interests of the seller must not be undermined. As was rightly pointed out, a word can only be generic if the primary meaning or association of the word changes and is taken to mean the service itself. In India, the standard for deeming a mark to be generic has been set on a similar pedestal. The protection of a generic word as a trademark requires a greater degree of proofand a lot more effort from the person claiming trademark rights over the mark. Therefore, in the instant case aswell as in setting a precedent to determine what constitutes a generic mark, the Court applied the express provision of the act aswell as the fundamental principles of trademark law in a manner which ensures that the holders rights are not prejudiced. Therefore, a liberal interpretation with regards to the proprietor’s rights in suit for genericide is essential. 

Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905 (9th Cir. 2007)

Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 (9th Cir. 1982)

Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 684 F.2d 1316, 1319 (9th Cir. 1982)

M/S Three- N-Products Pvt. Ltd. vs M/S Kairali Exports and Anr. (2009) 40 PTC 275