ELLIOT V. GOOGLE, 2017 WL 2112311 (9^TH CIR. MAY 17, 2017)

“Google it.”  Of course, we all know what this means. Indeed, the word “Google” has earned such widespread recognition that in 2006 it was added to the dictionary.  While this might be considered the epitome of success, it can be a nightmare in terms of trademark protection.

Background

“Google” is what trademark law refers to as a fanciful mark.  Fanciful marks are made up, and similar to arbitrary marks, have no association to a particular type of goods or services.  For example, “Apple” has no apparent relation to computers just as the names Uber, Twitter, and Amazon give no indication of the particular product or service it provides.  For that reason, fanciful and arbitrary marks generally garner the highest level of trademark protection because it usually takes the trademark owner significant effort marketing its business to reach the point that the public associates its product or service with the mark.
However, when a fanciful term receives such unimaginable success that it transforms itself into a concept or in Google’s case, an entry in the dictionary, it may be in danger of losing its trademark protection and becoming a dreaded “generic” term.  Both “aspirin” and “escalator” were victims of “genericide.”
To determine if a mark has become generic, the Ninth Circuit Court established the “who are you/what are you” test.[1]  Applying this test, a finder of fact would analyze if a term points to the source (who you are), or if a type of good (what you are).^[2]  An example is that the trademark “Coke” indicates a soft drink made by “Coca Cola” and the generic term “soda” indicates any carbonated soft drink. Once a term is found to be generic, it has no trademark protection, and can be fairly used by anyone in connection with describing goods or services.

Case

Aware of this risk, Google has vigilantly sought to protect its name.  In 2012 Google discovered that Chris Gillespie (“Gillespie”) acquired 763 domain names that included the term “Google.”  David Elliot (“Elliot”) purchased and registered the domain names using Gillespie’s GoDaddy.com account. Each of the domain names paired the term “Google” with a person, brand or product, such as “googledisney.com” and “googlebarackobama.com.” Google promptly objected to the registration of the domain names and filed a complaint with the National Arbitration Forum (“NAF”) using its dispute resolution procedure. Google argued that the domain names were confusingly similar to the “Google” trademark, were registered in bad faith and constituted cybersquatting.  Google prevailed and NAF transferred the domain names to Google.
Elliot then filed an action in the Arizona District Court (Gillespie later joined in the suit) for cancellation of the Google trademark on the grounds that the word “google” had become a generic term to describe the act of internet searching.

Ruling

After cross-motions for summary judgment, the district court found that Elliot and Gillespie failed to present sufficient evidence to support a jury finding that the public primarily understands the word “google” as a generic name for internet search engines[3].  Elliot and Gillespie appealed to the Ninth Circuit claiming that (1) they had presented sufficient evidence to create a triable issue of fact and (2) that the district court misapplied the primary significance test and failed to recognize the importance of the use of google as a verb.
On May 17, 2017, the Ninth Circuit affirmed the finding that a claim of genericide must always relate to a particular type of good or service, and that use of ‘Google’ as a verb is not synonymous with a finding of genericide[4].

Impact

Like Google, trademark owners must always be vigilant, monitor the public’s use of its mark and take affirmative steps to correct any public misuse to protect against potential claims of genericide.
 

Terri Meyers is a Partner at the Miami firm of Kluger Kaplan Silverman Katzen & Levine, P.L. and leads the firm’s Intellectual Property department.
 
 
 

Mayda Nahhas is a law clerk at Kluger Kaplan Silverman Katzen & Levine, P.L., a rising third-year law student at Nova Southeastern University – Shepard Broad College of Law, the Goodwin Alumni Editor for Nova Law Review Vol. 42, and the Founding President of Nova Southeastern University Fashion Law Association.
 
[1] Official Airline Guides, Inc. v. Goss, 6 F. 3d 1385 (9^th Cir. 1993).
[2] Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9^th Cir. 2005); Filipino Yellow Pages, Inc. v. Asian Journal Publication, Inc., 198 F.3d 1143, at 1147 (9^th Cir. 1999).
[3] Elliot v. Google, 2017 WL 2112311 at 2 (9^th Cir. 2017).
[4] Id. at 3.