The Ninth Circuit ruled that “Google” isn’t a generic trademark. This isn’t a surprise because a district court already reached this conclusion in 2014. See my prior blog post, “Google Successfully Defends Its Most Valuable Asset In Court.” Still, the Ninth Circuit’s ruling hands Google–and other well-known brand owners–a powerful and emphatic win.

The court’s opinion delves deeply into genericide geekery, but the top-line conclusion is unambiguous. The court says plainly that “verb use does not automatically constitute generic use.” This eviscerates the plaintiff’s case because, as Judge Watford says in a concurrence, “the plaintiffs produced thousands of pages of largely irrelevant evidence showing merely that ‘google’ is sometimes used as a verb.”

To reach its conclusion, the court says that “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.” The court gives an example:

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.

This “discriminate”/”indiscriminate” distinction is a win for other very popular trademarks. For example, the court analogizes the oft-used Kleenex example:

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-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.”

Want to say “Do you Yahoo?” Go for it!

Most of Elliott’s evidence failed because it was designed to show widespread consumer use of Google as a verb, rather than the required showing “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.” As a result, the court disregards:

* evidence that Google used its own mark as a verb (adding that lower-case usage is just “grammatical formalism”).

* evidence that “Google” is listed in dictionaries because (A) the dictionaries’ first definition referenced it as a brand, and (B) the secondary definition just reinforced the plaintiff’s basic point that some consumers use “Google” as a verb for searching. “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.” Yay for trademark bullying of dictionary publishers!

* the lack of good synonyms. “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.”

* casual press references to Google as a verb:

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….However, if the parties offer competing examples of both generic and trademark use, this source of evidence is typically insufficient to prove genericide.

Implications

Big Win for Big Trademark Owners. The Google brand is one of the most valuable on earth. The court emphatically endorsed all of its practices (and the significant dollars Google spent preparing this case). I’m sure Google will face other genericide challenges in the future, but this ruling will make such challenges difficult or impossible. Other big brands whose trademarks are often used as verbs or nouns also have a lot of reason to cheer this ruling.

Implications for Keyword Advertising Cases? Though the case doesn’t directly discuss competitive keyword advertising, its ruling may affect those cases. The court makes an interesting distinction between “discriminate” and “indiscriminate” trademark usage by consumers. The former means the consumer is searching for the brand; the latter means that the consumer is thinking about the class of goods that includes the trademark without thinking of any brand in particular. Extrapolated to the competitive keyword advertising context, that’s exactly what happens when consumers use a trademark as a keyword. Some consumers want the trademark owner and no one else; while other consumers are seeking the class of goods and not really thinking about the trademark owner. The Ninth Circuit’s framework can be invoked by competitive keyword advertising defendants to highlight that there is a class of consumers who refer to the trademark but don’t intend to find just the trademark owner. Depending on how much courts value that consumer cohort, it could be fatal to a plaintiff’s case.

Case citation: Elliott v. Google, Inc., 2017 WL 2112311 (9th Cir. May 16, 2017)