David Elliott v. Google Inc. ( 2017 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
DAVID ELLIOTT, an Individual; No. 15-15809
CHRIS GILLESPIE, an Individual,
Plaintiffs-Appellants, D.C. No.
2:12-cv-01072-
v. SMM
GOOGLE, INC., a Delaware
corporation, AMENDED
Defendant-Appellee. OPINION
Appeal from the United States District Court
for the District of Arizona
Stephen M. McNamee, District Judge, Presiding
Argued and Submitted March 17, 2017
San Francisco, California
Filed May 16, 2017
Amended June 14, 2017
Before: Richard C. Tallman and Paul J. Watford, Circuit
Judges, and Louis Guirola, Jr., * Chief District Judge.
*
The Honorable Louis Guirola, Jr., Chief United States District
Judge for the Southern District of Mississippi, sitting by designation.
2 ELLIOTT V. GOOGLE
Opinion by Judge Tallman;
Concurrence by Judge Watford
SUMMARY **
Trademark Law
The panel affirmed the district court’s summary
judgment in favor of Google, Inc., in an action under the
Lanham Act, seeking cancellation of the GOOGLE
trademark on the ground that it is generic.
The panel held that a claim of genericness or
“genericide,” where the public appropriates a trademark and
uses it as a generic name for particular types of goods or
services irrespective of its source, must be made with regard
to a particular type of good or service. The district court thus
correctly focused on internet search engines rather than the
“act” of searching the internet. The panel also held that verb
use of the word “google” to mean “search the internet,” as
opposed to adjective use, did not automatically constitute
generic use. The panel affirmed the district court’s
conclusion that the plaintiffs’ evidence was insufficient to
establish that the primary significance of the word “google”
to the relevant public was as a generic name for internet
search engines, rather than as a mark identifying the Google
search engine in particular.
**
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
ELLIOTT V. GOOGLE 3
Concurring, Judge Watford wrote that he joined the
court’s opinion with 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.
COUNSEL
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.
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.”
4 ELLIOTT V. GOOGLE
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 trademark 1 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
1
Both the NAF case and the case at issue actually involve two
separate trademark registrations—numbers 2884502 and 2806075. But
because the parties agree that these two marks collectively refer to the
Google search engine and related services, we refer to these marks
collectively as the GOOGLE trademark.
2
For the remainder of this opinion, we collectively refer to
Appellants as “Elliott.”
ELLIOTT V. GOOGLE 5
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.
6 ELLIOTT V. GOOGLE
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
(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 (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 Cellophane
ELLIOTT V. GOOGLE 7
Co. 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 (1938).
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,
8 ELLIOTT V. GOOGLE
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 argues that the district court erred when it
ELLIOTT V. GOOGLE 9
focused on internet search engines. We reject Elliott’s
criticism and conclude that the district court properly
recognized the necessary and inherent link between a claim
of genericide and a particular type of good or service.
This requirement is clear from the text of the Lanham
Act, which allows a party to apply for cancellation of a
trademark when it “becomes the generic name for the goods
or services . . . for which it is registered.” 15 U.S.C.
§ 1064(3) (emphasis added). The Lanham Act further
provides that “[i]f the registered mark becomes the generic
name for less than all of the goods or services for which it is
registered, a petition to cancel the registration for only those
goods or services may be filed.” Id. (emphasis added).
Finally, the Lanham Act specifies that the relevant question
under the primary significance test is “whether the registered
mark has become the generic name of [certain] goods or
services.” Id. (emphasis added). In this way, the Lanham
Act plainly requires that a claim of genericide relate to a
particular type of good or service.
We also note that such a requirement is necessary to
maintain the viability of arbitrary marks as a protectable
trademark category. By definition, an arbitrary mark is an
existing word that is used to identify the source of a good
with which the word otherwise has no logical connection.
See JL Beverage Co., 828 F.3d at 1107. If there were no
requirement that a claim of genericide relate to a particular
type of good, then a mark like IVORY, which is “arbitrary
as applied to soap,” could be cancelled outright because it is
“generic when used to describe a product made from the
tusks of elephants.” Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 n.6 (2d Cir. 1976). This is not
how trademark law operates: Trademark law recognizes that
a term may be unprotectable with regard to one type of good,
10 ELLIOTT V. GOOGLE
and protectable with regard to another type of good. In this
way, the very existence of arbitrary marks as a valid
trademark category supports our conclusion that a claim of
genericide must relate to a particular type of good or service.
Second, Elliott’s alternative inquiry fails because verb
use does not automatically constitute generic use. Elliott
claims that a word can only be used in a trademark sense
when it is used as an adjective. He supports this claim by
comparing the definitions of adjectives and trademarks,
noting that both adjectives and trademarks serve descriptive
functions.
Once again, Elliott’s semantic argument contradicts
fundamental principles underlying the protectability of
trademarks. When Congress amended the Lanham Act to
specify that the primary significance test applies to claims of
genericide, it specifically acknowledged that a speaker might
use a trademark as the name for a product, i.e., as a noun,
and yet use the mark with a particular source in mind, i.e., as
a trademark. It further explained that:
A trademark can serve a dual function—that
of [naming] a product while at the same time
indicating its source. Admittedly, if a
product is unique, it is more likely that the
trademark adopted and used to identify that
product will be used as if it were the
identifying name of that product. But this is
not conclusive of whether the mark is
generic.
S. Rep. No. 98-627, at 5 (1984). In this way, Congress has
instructed us that a speaker might use a trademark as a noun
and still use the term in a source-identifying trademark
sense.
ELLIOTT V. GOOGLE 11
Moreover, we have already implicitly rejected Elliott’s
theory that only adjective use constitutes trademark use. In
Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 (9th Cir.
1982), the Coca-Cola Company sued a local restaurant for
trademark infringement because its servers regularly and
surreptitiously replaced customer orders for “a coke” with a
non-Coca-Cola beverage. Id. at 1252. The restaurant
defended on the basis of genericide, arguing that the COKE
trademark had become a generic name for all cola beverages.
Id. at 1254. To support its claim, the restaurant presented
employee affidavits stating that the employees believed that
customers who ordered “a coke” were using the term in a
generic sense. Id. We rejected these affidavits because they
were not based on personal knowledge. More significant to
the issue at hand, we also noted that the mere fact that
customers ordered “a coke,” i.e., used the mark as a noun,
failed to show “what . . . customers [were] thinking,” or
whether they had a particular source in mind. Id. at 1255.
If Elliott were correct that a trademark can only perform
its source-identifying function when it is used as an
adjective, then we would not have cited a need for evidence
regarding the customers’ inner thought processes. Instead,
the fact that the customers used the trademark as a noun and
asked for “a coke” would prove that they had no particular
source in mind. In this way, we have implicitly rejected
Elliott’s theory that a trademark can only serve a source-
identifying function when it is used as an adjective.
For these reasons, the district court correctly rejected
Elliott’s theory that verb use automatically constitutes
generic use. 3 Moreover, the district court aptly coined the
3
We acknowledge that if a trademark is used as an adjective, it will
typically be easier to prove that the trademark is performing a source-
12 ELLIOTT V. GOOGLE
terms “discriminate verb” and “indiscriminate verb” in order
to evaluate Elliott’s proffered examples of verb use and
determine whether they were also examples of generic use.
Although novel, these terms properly frame the relevant
inquiry as whether a speaker has a particular source in mind.
We have already acknowledged that a customer might use
the noun “coke” in an indiscriminate sense, with no
particular cola beverage in mind; or in a discriminate sense,
with a Coca-Cola beverage in mind. In the same way, we
now recognize that an internet user might use the verb
“google” in an indiscriminate sense, with no particular
search engine in mind; or in a discriminate sense, with the
Google search engine in mind.
Because a claim of genericide must relate to a particular
type of good or service and because verb use does not
necessarily constitute generic use, the district court did not
err when it refused to frame its inquiry as whether the
relevant public primarily uses the word “google” as a verb.
Moreover, the district court correctly framed its 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. We therefore evaluate Elliott’s claim of
genericide and the sufficiency of his proffered evidence
under the proper inquiry.
identifying function. If a speaker asks for “a Kleenex tissue,” it is quite
clear that the speaker has a particular brand in mind. But we will not
assume that a speaker has no brand in mind simply because he or she
uses the trademark as a noun and asks for “a Kleenex.” Instead, the party
bearing the burden of proof must offer evidence to support a finding of
generic use. See McCarthy § 12:8 (“The fact that buyers or users often
call for or order a product by a [trademark] term does not necessarily
prove that that term is being used as a ‘generic name.’”).
ELLIOTT V. GOOGLE 13
Elliott next argues that the district court must have
impermissibly weighed the evidence when it granted
summary judgment for Google in light of the “sheer
quantity” of evidence that Elliott produced to support his
claim of genericide. See Jesinger v. Nev. Fed. Credit Union,
24 F.3d 1127, 1131 (9th Cir. 1994) (noting that a court “must
not weigh the evidence” at summary judgment). We
disagree. Instead, we conclude that Elliott’s admissible
evidence is largely inapposite to the relevant inquiry under
the primary significance test because Elliott ignores the fact
that a claim of genericide must relate to a particular type of
good or service.
A party applying for cancellation of a registered
trademark bears the burden of proving genericide by a
preponderance of the evidence. Anti-Monopoly, Inc. v. Gen.
Mills Fun Grp., 684 F.2d 1316, 1319 (9th Cir. 1982).
Moreover, the holder of a registered trademark benefits from
a presumption of validity and has “met its [initial] burden of
demonstrating” the lack of “a genuine issue of material fact”
regarding genericide. Coca-Cola Co., 692 F.2d at 1254.
Therefore, in light of the relevant inquiry under the primary
significance test, Elliott was required to identify sufficient
evidence to support a jury finding that the primary
significance of the word “google” to the relevant public is as
a name for internet search engines generally and not as a
mark identifying the Google search engine in particular.
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]
14 ELLIOTT V. GOOGLE
search engine used.” 4 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.
As explained above, 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. As
explained below, we also agree that Elliott’s admissible
evidence only supports the favorable but insufficient
inference already drawn by the district court—that a
majority of the public uses the verb “google” in a generic
sense. Standing in isolation, 5 this fact is insufficient to
support a jury finding of genericide. The district court
therefore properly granted summary judgment for Google.
We begin with Elliott’s three consumer surveys.
Consumer surveys may be used to support a claim of
genericide “so long as they are conducted according to
accepted principles.” Stuhlbarg Int’l Sales Co. v. John D.
In making this assumption, the district court drew a favorable (and
4
generous) inference for Elliott. As discussed above, verb use does not
necessarily constitute generic use, yet most of Elliott’s proffered
evidence relies on that theory.
5
Contrary to our colleague’s suggestion, 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.
ELLIOTT V. GOOGLE 15
Brush & Co., 240 F.3d 832, 840 (9th Cir. 2001). Here, the
district court properly excluded two of Elliott’s consumer
surveys because they were not conducted according to
accepted principles. Specifically, these surveys were
designed and conducted by Elliott’s counsel, who is not
qualified to design or interpret surveys. See Federal Judicial
Center, Reference Manual on Scientific Evidence 364 (3d
ed. 2011) (explaining that valid survey design typically
requires graduate training or professional experience in
survey research). 6
The district court properly considered only Elliott’s third
survey, which was conducted by James Berger—a qualified
survey expert. Elliott’s third survey is a “Thermos” survey,
which generally “puts the respondent in an imaginary
situation . . . and asks how the respondent would ask” for the
type of good for which the trademark is alleged to be generic.
McCarthy § 12:15 (citing Am. Thermos Prods. Co. v.
Aladdin Indus., 207 F. Supp. 9, 21–22 (D. Conn. 1962),
aff’d, 321 F.2d 577 (2d Cir. 1963)). Here, Berger asked 251
respondents: “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?” Over half
of the 251 respondents answered this question by using the
word “google” as a verb.
Although verb use does not automatically constitute
generic use, the district court allowed Berger to rely on the
6
The district court also correctly noted that, if the surveys were
admitted, Elliott’s counsel would need to withdraw in order to offer
testimony on the survey results. See Ariz. R. Sup. Ct. 42, E.R. 3.7 (“A
lawyer shall not act as advocate at a trial in which the lawyer is likely to
be a necessary witness . . . .”).
16 ELLIOTT V. GOOGLE
third survey to offer his expert “opinion that a majority of
the public uses the word google as a [generic and
indiscriminate] verb to mean search on the internet.” In this
way, Elliott’s admissible consumer survey evidence goes no
further than supporting the favorable inference already
drawn by the district court. 7
We next consider Elliott’s examples of alleged generic
use by the media and by consumers. Documented examples
of generic use might support a claim of genericide if they
reveal a prevailing public consensus regarding the primary
significance of a registered trademark. See McCarthy
§ 12:13 (explaining that generic use by the media is a “strong
indication of the general public’s perception”) (quoting
Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d
95, 101 (2d Cir. 1989)). However, if the parties offer
competing examples of both generic and trademark use, this
source of evidence is typically insufficient to prove
genericide. See id.
7
The district court also considered a fourth survey. Although
Google already benefits from a presumption against genericide, see
Coca-Cola Co., 692 F.2d at 1254, Google offered a “Teflon” survey to
prove that the GOOGLE mark is not generic. A Teflon survey begins
with a brief lesson explaining the difference between brand names and
common names. It then asks respondents to classify a series of words,
including the trademark at issue, as either brand names or common
names. E. I. DuPont de Nemours & Co. v. Yoshida Int’l, Inc., 393 F.
Supp. 502, 526–27 (E.D.N.Y. 1975). In response to Google’s Teflon
survey, a little over 93% of respondents classified “Google” as a brand
name. Most respondents also classified “Coke,” “Jello,” “Amazon,” and
“Yahoo!” as brand names, and classified “Refrigerator,” “Margarine,”
“Browser,” and “Website” as common names. Unlike Elliott’s Thermos
survey, Google’s Teflon survey offers comparative evidence as to how
consumers primarily understand the word “google” irrespective of its
grammatical function.
ELLIOTT V. GOOGLE 17
Initially, we note that Elliott’s admissible examples are
only examples of verb use. To repeat, verb use does not
automatically constitute generic use. For instance, Elliott
purports to offer an example of generic use by T-Pain, a
popular rap music artist. But we will not assume that T-Pain
is using the word “google” in a generic sense simply because
he tells listeners to “google [his] name.” T-Pain, Bottlez, on
rEVOLVEr (RCA Records 2011). Without further evidence
regarding T-Pain’s inner thought process, we cannot tell
whether he is using “google” in a discriminate or
indiscriminate sense. In this way, many of Elliott’s
admissible examples do not even support the favorable
inference that a majority of the relevant public uses the verb
“google” in a generic sense.
Elliott also attempted to offer clear examples of
indiscriminate verb use by the media and by consumers. For
example, in response to Google’s motion for summary
judgment, he produced a transcript from an episode of a
German television show in which a character claims to have
“googled at Wikipedia.” Elliott also produced examples in
which the media uses phrases like “googled on ebay,”
“googled on facebook,” and “googled on pinterest.” Finally,
Elliott produced evidence suggesting that certain consumers
claimed that they accessed a website by “googling” it, even
though those consumers actually accessed the website
through a non-Google search engine.
The district court properly excluded these examples of
indiscriminate verb use because they were not disclosed
during discovery and because Elliott failed to show that his
delay was “substantially justified or . . . harmless.” Fed. R.
Civ. P. 37(c)(1); see also Yeti by Molly, Ltd. v. Deckers
Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001) (“[W]e
give particularly wide latitude to the district court’s
18 ELLIOTT V. GOOGLE
discretion to issue [discovery] sanctions . . . .”). Moreover,
even if these examples had been timely disclosed, they are
largely irrelevant because they only support the favorable
inference already drawn by the district court.
We next consider Elliott’s proffered expert testimony.
Each of Elliott’s experts, including Dr. Berger, Dr. Patrick
Farrell, and Dr. Allan Metcalf, opine that the word “google”
is used in a generic sense when it is used as a verb. 8 On its
face, this testimony simply supports the favorable inference
already drawn by the district court.
Next, we consider Elliott’s proffered dictionary
evidence. See McCarthy § 12:13 (noting that dictionary
definitions are “sometimes persuasive in determining public
usage”). Elliott does not present any examples where
“google” is defined as a generic name for internet search
engines. Instead, Elliott presents secondary definitions
where google is defined as a verb. See, e.g., Google,
CollinsEnglishDictionary.com, https://www.collinsdictiona
ry.com/dictionary/english/google (last visited Apr. 15,
2017) (defining google primarily as a “trademark” but
secondarily as a verb meaning “to search for (something on
the internet) using a search engine”); Google,
Dictionary.com, http://dictionary.reference.com/browse/go
ogle (last visited Apr. 15, 2017) (defining google primarily
as the “brand name of a leading Internet search engine” but
secondarily as a verb meaning “to search the Internet for
8
Elliott does not argue that these reports have any relevance beyond
showing generic verb use. Instead, Elliott attacks the credibility of
Google’s expert, Dr. Nunberg, and claims that the jury should be allowed
to evaluate his credibility. Elliott cannot carry his burden of proof by
attacking the credibility of Google’s experts. Moreover, the district court
properly rejected Elliott’s attacks on Dr. Nunberg as unsubstantiated.
ELLIOTT V. GOOGLE 19
information about [something]”). Once again, Elliott’s
proffered dictionary evidence only supports the favorable
inference already drawn by the district court. 9
Next, we consider Elliott’s claim that Google has used
its own trademark in a generic sense. Generic use of a mark
by the holder of that mark can support a finding of
genericide. See McCarthy § 12:13. However, Elliott has not
presented an example of generic use by Google. Instead,
Elliott has presented an email from Google cofounder Larry
Page, which encourages recipients to “[h]ave fun and keep
googling!” Once again, Elliott relies on an example of verb
use. Elliott has not shown, nor is it likely that he could show,
that the cofounder of Google had no particular search engine
in mind when he told recipients of the “Google Friends
Newsletter” to “keep googling.” 10
Finally, we consider Elliott’s claim that there is no
efficient alternative for the word “google” as a name for “the
act” of searching the internet regardless of the search engine
used. Once again, a claim of genericide must relate to a
particular type of good or service. In order to show that there
9
Elliott argues that these dictionaries only refer to the GOOGLE
trademark because Google threatened to take legal action if the
companies refused to acknowledge its registration. Contrary to Elliott’s
assumption, Google’s policing activities weigh against finding
genericide. See, e.g., Filipino Yellow Pages, Inc., 198 F.3d at 1151
(affirming lower court’s reliance on plaintiff’s lack of trademark policing
as evidence that mark had become generic); King-Seeley Thermos Co. v.
Alladin Indus., 321 F.2d 577, 579 (2d Cir. 1963) (same).
10
Elliott also argues that the email shows generic use because
“googling” is not capitalized. As we explained with regard to verb use
and noun use, we cannot rely on grammatical formalism to determine
what a speaker has in mind when using a registered trademark. See
Coca-Cola Co., 692 F.2d at 1255.
20 ELLIOTT V. GOOGLE
is no efficient alternative for the word “google” as a generic
term, Elliott must show that there is no way to describe
“internet search engines” without calling them “googles.”
Because not a single competitor calls its search engine “a
google,” and because members of the consuming public
recognize and refer to different “internet search engines,”
Elliott has not shown that there is no available substitute for
the word “google” as a generic term. Compare, e.g., Q-Tips,
Inc. v. Johnson & Johnson, 108 F. Supp. 845, 863 (D.N.J.
1952) (concluding that “medical swab” and “cotton-tipped
applicator” are efficient alternatives for Q-Tips); with Bayer
Co., 272 F. at 505 (concluding that there is no efficient
substitute for the generic term “aspirin” because consumers
do not know the term “acetyl salicylic acid”); see also
Softbelly’s Inc., 353 F.3d at 531 (explaining that genericide
does not typically occur “until the trademark has gone so far
toward becoming the exclusive descriptor of the product that
sellers of competing brands cannot compete effectively
without using the name”).
Elliott cannot survive summary judgment based on
“sheer quantity” of irrelevant evidence. We agree with the
district court that, at best, Elliott has presented admissible
evidence to support the inference that a majority of the
relevant public uses the verb “google” in a generic sense.
Because this fact alone cannot support a claim of genericide,
the district court properly granted summary judgment for
Google.
III.
The district court did not misapply the primary
significance test, nor did it weigh the evidence when it
granted summary judgment for Google. We agree that
Elliott has failed to present sufficient evidence to support a
jury finding that the relevant public primarily understands
ELLIOTT V. GOOGLE 21
the word “google” as a generic name for internet search
engines and not as a mark identifying the Google search
engine in particular. We therefore affirm the district court’s
grant of summary judgment.
Costs shall be taxed against Elliott. See Fed. R. App. P.
39(a)(2).
AFFIRMED.
WATFORD, Circuit Judge, concurring:
I join the court’s well-reasoned opinion with one caveat.
To resolve this appeal, we need not decide whether evidence
of a trademark’s “indiscriminate” verb use could ever tell us
something about whether the public primarily thinks of the
mark as the generic name for a type of good or service. Maj.
op. at 13–14. To the extent the court’s opinion can be read
as taking a position on that question, I decline to join that
aspect of its reasoning.
We don’t need to resolve whether evidence of
indiscriminate verb use is categorically irrelevant in an
action alleging that a trademark has become generic because,
on this record, no rational jury could find in the plaintiffs’
favor even taking into account the flimsy evidence of
indiscriminate verb use they produced. In support of its
motion for summary judgment, Google produced
overwhelming evidence that the public primarily
understands the word “Google” as a trademark for its own
search engine, not the name for search engines generally. In
Google’s consumer survey, 93% of respondents identified
“Google” as a brand name, rather than a common name for
search engines. In every dictionary in the record, the first
22 ELLIOTT V. GOOGLE
entry for “Google” or “google” refers to Google’s search
engine. Google extracted concessions from the plaintiffs’
expert linguists that Google functions as a trademark for
Google’s search engine. Google also submitted evidence
showing that it uses its trademark to refer only to its own
search engine, that it polices infringement by others, and that
its competitors refrain from using the trademark to refer to
their own search engines. Finally, Google offered evidence
showing that major media outlets use “Google” to refer
exclusively to Google’s search engine.
In response, the plaintiffs produced thousands of pages
of largely irrelevant evidence showing merely that “google”
is sometimes used as a verb. The sliver of potentially
relevant evidence purporting to show that the public uses the
verb “google” to refer to searching the Internet with any
search engine (as opposed to Google’s search engine in
particular) is too insubstantial to save the plaintiffs’ case.
For example, the plaintiffs point to their Thermos survey, in
which respondents were asked what word or phrase they
would use to ask a friend to search for something on the
Internet. Most respondents answered either “google,”
“google it,” “google something,” “google this,” “google
search,” or “bring up google.” However, those answers
share the same problem that the court identifies with almost
all of the plaintiffs’ evidence, such as the rapper T-Pain’s
lyric telling his listeners to “google my name.” That is,
without more context, we simply can’t tell whether the
survey respondents were referring to searching the Internet
with Google’s search engine or with any search engine
generally.
At most, with respect to evidence that the public employs
the verb “google” without regard to the search engine used,
the plaintiffs have mustered secondary definitions from a
ELLIOTT V. GOOGLE 23
few dictionaries and expert testimony from their linguists.
Whatever this evidence might suggest about the use of
“google” as a verb, no rational jury could rely on it to find,
on this record, that the word has become the generic name
for Internet search engines. As already mentioned, these
dictionaries’ primary definitions of the word uniformly refer
to Google’s own search engine. And the expert linguists
conceded in their depositions that, despite their opinion that
“google” is used in verb form without regard to a specific
search engine, the term has not become a generic name for
search engines.
There may never be a case that turns on evidence that a
trademark is commonly used as a verb to refer to use of a
type of good or service, as opposed to use of the particular
product for which the trademark is registered. But if such a
case were to arise, it’s not obvious to me that a jury should
be foreclosed from relying on the way the public uses the
word as a verb to decide whether the public also thinks of
the mark as the generic name for the type of good or service.
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.