Trevor Little

The Court of Appeals for the Ninth Circuit has confirmed that “‘verb use does not necessarily constitute generic use” and affirmed a district court judgment in favour of Google in an action seeking cancellation of the GOOGLE mark on the ground that it is generic. One industry commentator argues that other big brands have "a lot of reason to cheer" the ruling.

in Elliot v Google Inc, the plaintiffs claimed that the GOOGLE trademarks were 'generic' because a majority of the public uses 'google' as a verb to mean using any internet search engine without specific reference to the company Google or its marks, It therefore sought cancellation of the company’s federal trademark registrations for the GOOGLE marks under 15 USC §1043 on the ground of genericness. In September 2014, the US District Court for the District of Arizona held that, even though consumers use 'google' as a verb to mean using any internet search engine, GOOGLE is a valid trademark because the “primary significance” of the mark to consumers is the company’s internet search engine. This decision was appealed and yesterday the Court Of Appeals For The Ninth Circuit affirmed the judgement.

This week's decision held that a claim of genericness must be made with regard to a particular type of good or service, confirming: “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.” In this case, the panel found that the district court had correctly focused on internet search engines (rather than the act of searching the internet) and that, in its evidence, “Elliott ignores the fact that a claim of genericide must relate to a particular type of good or service.”

The panel also emphasised that verb use of the word ‘google’ to mean “search the internet,” as opposed to adjective use, did not automatically constitute generic use. It expanded: “We do not hold that generic verb use is ‘categorically irrelevant’. However, evidence that a mark is used in a generic sense in one particular setting cannot support a finding of genericide when it is unaccompanied by evidence regarding the primary significance of the mark as a whole.”

With respect the current case, the court expanded: “At summary judgment, the district court assumed that a majority of the public uses the verb ‘google’ to refer to the act of ‘searching on the internet without regard to [the] search engine used’. In other words, it assumed that a majority of the public uses the verb ‘google’ in a generic and indiscriminate sense. The district court then concluded that this fact, on its own, cannot support a jury finding of genericide under the primary significance test. We agree… A claim of genericide must relate to a particular type of good. Even if we assume that the public uses the verb “google” in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines.”

Concurring with the opinion of Judge Tallman, Judge Watford added the caveat that the panel need not decide whether evidence of a trademark’s ‘indiscriminate’ verb use could ever tell a jury anything about whether the public primarily thinks of the mark as the generic name for a type of good or service. Watford wrote: “The way we use words as verbs is often related to how we use those words as adjectives or nouns, such that evidence of indiscriminate verb use could potentially be relevant in deciding whether a trademark has become the generic name for a type of good or service. To the extent the court’s opinion can be read to foreclose the consideration of such evidence as a matter of law, I decline to join it.”

In this decision, the focus, then, was on the evidence submitted by Elliot and its relevance to the primary significance test. Writing in World Trademark Review at the time of the 2014 District Court decision, Kenyon & Kenyon’s Howard J Shire and Jonathan Thomas argued: “With respect to trademark practitioners, Elliot serves as an important reminder that trademark surveys should always be tailored towards the dispositive issue(s) in a case. Had the plaintiffs’ survey in Elliot been tailored towards the primary significance of 'google' to consumers, instead of whether consumers used 'google'-as-verb in the discriminate or indiscriminate sense, the outcome may have been different.”

However, with this week's decision now handed down, on the Technology and Marketing Law blog, Eric Goldman characterises it as a “big win” for trademark owners, concluding: “Other big brands whose trademarks are often used as verbs or nouns also have a lot of reason to cheer this ruling.”

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