Elliot v. Google Inc. (No. CV-12-1072-PHX-SMM, 2014 U.S. Dist. LEXIS 127352 (D. Ariz. Sept. 10, 2014))

By Irene Calboli

In September 2014, Google emerged victorious from a dispute in which the plaintiff argued that the GOOGLE mark had become generic. A certainly “expected” case due to the notoriety of the GOGGLE mark and the widespread use of the wording “google” (or “to google”) by the general public, this case is relevant in (re)defining the existing judicial boundaries applied to the concepts of trademark distinctiveness and genericness. Undoubtedly, the ruling was welcomed by Google and, in turn, the owners of widely used famous trademarks.[1]

Notably, in Elliot v. Google Inc.,[2] plaintiff David Elliot sought cancellation of two incontestable U.S. trademark registrations for the word mark GOOGLE following an adverse decision by a Uniform Domain Name Dispute Resolution Policy (UDRP) panel which ordered the plaintiff to transfer to Google 763 domain names with the word “google” based, inter alia, on the confusing similarity to and the valid registration of the GOOGLE mark.[3] Against this decision, the plaintiff argued that the GOOGLE mark had become generic, and therefore invalid, leaving Google with no rights under which to request transfer of the domain names with the word “google.”[4] Both parties moved for summary judgment as to the validity of the GOOGLE mark and ultimately the court found that the GOOGLE mark is valid and not generic.

In supporting his claim, David Elliot contended that the GOOGLE mark had become generic because the public frequently uses the wording “google” as a verb.[5] The court, however, clarified that using a mark as a verb does not necessarily renders the mark generic as long as the mark continues to perform its statutory function—that of distinguishing a product or service from those of others and to indicate the product’s or service’s source. More specifically, the court noted that a mark can be used as a verb in both a discriminate (referring to an activity with a particular product or service—performing its statutory function) and an indiscriminate (referring to a category of activity in general—not performing its statutory function) sense simultaneously, but this dual function does not render a mark generic.[6] The court pointed out that, even if a mark is used as a verb exclusively in the indiscriminate sense, the mark has still not become generic if a majority of the consuming public continues to use the mark to distinguish the product or service of choice from those offered by competitors.[7]

In general, the court elaborated that the proper test to follow to assess whether a mark has become generic is the “Primary Significance Test.”[8] Under this test, a mark is considered to be generic if the principal significance of the mark—not some significance—is to identify the nature or class of a product, rather than of its origin. In this context, the use of a trademark in its verb form may indicate the enduring fame of the mark rather than the fact that the mark has become generic, especially when the mark is arbitrary or fanciful.[9]

By applying this test, the court concluded the majority of the public who performs searches on the Internet continues to refer to the wording “google” as the GOOGLE search engine as opposed to a descriptive term for search engines in general. Notably, the court reasoned that the wording “google” only had four possible meanings: “(1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”[10] In particular, the court stated that the marks would be subject to cancellation only if the fourth meaning was the primary significance of the word “google” to a majority of the consuming public.[11]

Consumer survey evidence also showed that well over 90% of the consuming public understood the word “google” as designating not a common name, but a particular brand with respect to Internet search engines.[12] Additionally, Google’s survey expert conducted a consumer survey in which almost 94% of the relevant consumers identified GOOGLE as a brand name and 5.25% identified GOOGLE as a common name.[13] In contrast, the plaintiffs’ admissible evidence included a survey that tested whether people who access the internet at least once a week regard GOOGLE in its verb form to be generic by asking: “if you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?”[14] 51% of answers contained the word “google.”[15] In the court’s eyes, this survey failed to test the primary significance of the GOOGLE mark and only provided evidence establishing, at most, that a majority of the public uses the word “google” as a verb in the indiscriminate sense to mean search on the internet.[16] Moreover, even though 51% of the public may use the wording “google” as a verb (the third meaning in the court’s reasoning), Google’s survey evidence proved that the first meaning is more significant and coexists with the third.[17]

As to other evidence relevant to the primary significance inquiry (i.e., dictionary usage, mark-holder usage, competitor usage, and media usage), even though the GOOGLE mark is used in other domain names that plaintiffs did not purchase, the court found that Google did enough to disprove non-enforcement of the mark. Moreover, the court rejected plaintiffs’ request for a minimum percentage of enforcement expenditure to prevent genericide. In this respect the court found that this would diminish the economic value of a mark to the mark-holder by inflating enforcement costs according to some arbitrary fraction of mark valuation, which would be contrary to the goals of trademark law.[18]

Finally the court found that the mark GOOGLE was not generic because competitors could accurately describe their goods or services using a short and simple descriptive term—“internet search engines”—and not “google.”[19] In particular, the court held that because the plaintiffs did not present any evidence that the primary significance of the word “google” to a majority of the consuming public is a common descriptive term for search engines and because Google’s mark registration entitled them to a presumption of validity and non genericness, Google had met its burden of demonstrating that the genericness of the mark did not raise a genuine issue of material fact, and therefore, the GOOGLE marks remain valid and not generic.[20]

[1] See generally Deven R. Desai & Sandra L. Rierson, Confronting the Genericism Conundrum, 28 Cardozo L. Rev. 1789 (2007) (discussing the distinctions in genericism where a brand is used generically but maintains its source identifying function and where it does not).

[2] Elliot v. Google Inc., No. CV-12-1072-PHX-SMM, 2014 U.S. Dist. LEXIS 127352 (D. Ariz. Sept. 10, 2014).

[3] Id. at *3–5.

[4] Id.

[5] Id. at *6–7.

[6] Id. at *8–10.

[7] Id. at *11.

[8] Id. at *8.

[9] Id. at *13 (citing Laura A. Heymann, The Grammar of Trademarks, 14 Lewis & Clark L. Rev. 1313, 1348 (2010)).

[10] Id. at *42.

[11] Id.

[12] Id. at *44.

[13] Id. at *20–21.

[14] Id. at *28.

[15] Id. at *40.

[16] Id. at *40–41.

[17] Id. at *44.

[18] Id. at *32–41.

[19] Id. at *38.

[20] Id. at *46–47.