Elliott v. Google, Inc.

• Decision Date: 16 May 2017
• Docket Number: No. 15-15809,15-15809
• Citation: 860 F.3d 1151
• Parties: David ELLIOTT, an Individual; Chris Gillespie, an Individual, Plaintiffs–Appellants, v. GOOGLE, INC., a Delaware corporation, Defendant–Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

860 F.3d 1151

David ELLIOTT, an Individual; Chris Gillespie, an Individual, Plaintiffs–Appellants,

v.GOOGLE, INC., a Delaware corporation, Defendant–Appellee.

No. 15-15809

United States Court of Appeals, Ninth Circuit.

Argued and Submitted March 17, 2017, San Francisco, California

Filed May 16, 2017

Amended June 14, 2017

Richard M. Wirtz (argued) and Erin K. Barns, Wirtz Law APC, San Diego, California; Thomas D. Foster, TD Foster–Intellectual Property Law, San Diego, California; for Plaintiffs–Appellants.

Angela L. Dunning (argued), Cooley LLP, Palo Alto, California; Peter J. Willsey, Cooley LLP, Washington, D.C.; for Defendant–Appellee.

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

Concurrence by Judge Watford

OPINION

TALLMAN, Circuit Judge:

I.

Between February 29, 2012, and March 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word "google." Each of these domain names paired the word "google" with some other term identifying a specific brand, person, or product—for example, "googledisney.com," "googlebarackobama.net," and "googlenewtvs.com."

Google, Inc. ("Google") objected to these registrations and promptly filed a complaint with the National Arbitration Forum ("NAF"), which has authority to decide certain domain name disputes under the registrar's terms of use. Google argued that the registrations violate the Uniform Domain Name Dispute Resolution Policy, which is included in the registrar's terms of use, and amount to domain name infringement, colloquially known as "cybersquatting." Specifically, Google argued that the domain names are confusingly similar to the GOOGLE trademark¹ and were registered in bad faith. The NAF agreed, and transferred the domain names to Google on May 10, 2012.

Shortly thereafter, David Elliott filed, and Gillespie later joined,² an action in the Arizona District Court. Elliott petitioned for cancellation of the GOOGLE trademark under the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a "generic name for the goods or services, or a portion thereof, for which it is registered." 15 U.S.C. § 1064(3). Elliott petitioned for cancellation on the ground that the word "google" is primarily understood as "a generic term universally used to describe the act[ ] of internet searching."

On September 23, 2013, the parties filed cross-motions for summary judgment on the issue of genericness. Elliott requested summary judgment because (1) it is an indisputable fact that a majority of the relevant public uses the word "google" as a verb—i.e., by saying "I googled it," and (2) verb use constitutes generic use as a matter of law. Google maintained that verb use does not automatically constitute generic use, and that Elliott failed to create even a triable issue of fact as to whether the GOOGLE trademark is generic. Specifically, Google argued that Elliott failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word "google" as a generic name for internet search engines. The district court agreed with Google and its framing of the relevant inquiry, and granted summary judgment in its favor.

Elliott raises two arguments on appeal. First, he argues that the district court misapplied the primary significance test and failed to recognize the importance of verb use. Second, he argues that the district court impermissibly weighed the evidence when it granted summary judgment for Google. We review the district court's grant of summary judgment de novo and ask, viewing the evidence in the light most favorable to Elliott, "whether there are any genuine issues of material fact and whether the district court correctly applied the relevant substantive law." KP Permanent Make–Up, Inc. v. Lasting Impression I, Inc. , 408 F.3d 596, 602 (9th Cir. 2005) (citing Clicks Billiards, Inc. v. Sixshooters, Inc. , 251 F.3d 1252, 1257 (9th Cir. 2001) ). For the reasons described below, we reject both of Elliott's arguments and affirm summary judgment for Google.

II.

We recognize four categories of terms with regard to potential trademark protection: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful terms. Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc. , 198 F.3d 1143, 1146 (9th Cir. 1999) (quoting Surgicenters of Am., Inc.v. Med. Dental Surgeries, Co. , 601 F.2d 1011, 1014 (9th Cir. 1979) ). This case involves the first and fourth categories, which lie at opposite ends of the spectrum with regard to protectability. At one extreme, generic terms are "common descriptive" names which identify only the type of good "of which the particular product or service is a species." Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc. , 718 F.2d 327, 329 (9th Cir. 1983), rev'd on other grounds , 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). Generic terms are not protectable because they do not identify the source of a product. Id. At the other extreme, arbitrary or fanciful marks "employ words and phrases with no commonly understood connection to the product." JL Beverage Co. v. Jim Beam Brands Co. , 828 F.3d 1098, 1107 (9th Cir. 2016). Arbitrary or fanciful marks are "automatically entitled to protection because they naturally serve to identify a particular source of a product." KP Permanent Make–Up, Inc. , 408 F.3d at 602 (alterations omitted) (quoting Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) ).

Over time, the holder of a valid trademark may become a "victim of ‘genericide.’ " Freecycle Network, Inc. v. Oey , 505 F.3d 898, 905 (9th Cir. 2007) (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:1 (4th ed. 1998) [hereinafter McCarthy] ). Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, ASPIRIN, CELLOPHANE, and ESCALATOR were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods. But the public appropriated those marks and now primarily understands aspirin, cellophane, and escalator as generic names for those same goods. See Bayer Co. v. United Drug Co. , 272 F. 505, 510 (S.D.N.Y. 1921) ; DuPont CellophaneCo. v. Waxed Prods. Co. , 85 F.2d 75, 82 (2d Cir. 1936) ; Freecycle Network, Inc. , 505 F.3d at 905. The original holders of the ASPIRIN, CELLOPHANE, and ESCALATOR marks are thus victims of genericide.

The question in any case alleging genericide is whether a trademark has taken the "fateful step" along the path to genericness. Ty Inc. v. Softbelly's Inc. , 353 F.3d 528, 531 (7th Cir. 2003). The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic. See 15 U.S.C. § 1064(3). Instead, 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. Id .

We have often described this as a "who-are-you/what-are-you" test. See Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc. , 419 F.3d 925, 929 (9th Cir. 2005) (quoting Filipino Yellow Pages, Inc. , 198 F.3d at 1147 ). 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. But if the relevant public primarily understands a mark as describing "what" the particular good or service is, then the mark has become generic. In sum, we ask whether "the primary significance of the term in the minds of the consuming public is [now] the product [and not] the producer." Kellogg Co. v. Nat'l Biscuit Co. , 305 U.S. 111, 118, 59 S.Ct. 109, 83 L.Ed. 73 (1938).

A.

On appeal, Elliott claims that he has presented sufficient evidence to create a triable issue of fact as to whether the GOOGLE trademark is generic, and that the district court erred when it granted summary judgment for Google. First, he argues that the district court erred because it misapplied the primary significance test and failed to recognize the importance of verb use. Specifically, he argues 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. Instead, Elliott argues that the court should have framed the inquiry as whether the relevant public primarily uses the word "google" as a verb.

We conclude that Elliott's proposed inquiry is fundamentally flawed for two reasons. First, Elliott fails to recognize that a claim of genericide must always relate to a particular type of good or service. Second, he erroneously assumes that verb use automatically constitutes generic use. For similar reasons, we conclude that the district court did not err in its formulation of the relevant inquiry under the primary significance test.

First, we take this opportunity to clarify that a claim of genericide or genericness must be made with regard to a particular type of good or service. We have not yet had occasion to articulate this requirement because parties usually present their claims in this manner sua sponte. See, e.g. , KP Permanent Make–Up, Inc. , 408 F.3d at 605 (claiming that "micro colors" is generic for micropigmentation services); Filipino Yellow Pages, Inc. , 198 F.3d at 1146 (claiming that "Filipino Yellow Pages" is generic for "telephone directories targeted at the Filipino–American community"); Park ‘N Fly, Inc. , 718 F.2d at 330 (claiming that "Park ‘N Fly" is generic for airport parking lots). But here, Elliott claims that the word "google" has become a generic name for "the act" of searching the internet, and...