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Elliot v. Google Inc. - 45 F. Supp. 3d 1156 (D. Ariz. 2014)

Rule:

A mark is subject to cancellation if it becomes the generic name for the goods or services, or a portion thereof, for which it is registered. 15 U.S.C.S. § 1064(3). The primary significance of the registered mark to the relevant public shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. 15 U.S.C.S. § 1064(3). Under the primary-significance test, a mark is not generic when the primary significance of the term in the minds of the consuming public is not the product but the producer. If the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark.

Facts:

During a two-week period ending on March 10, 2012, Plaintiffs David Elliott and Chris Gillespie used a domain name registrar to acquire 763 domain names that combined the word "google" with another brand. Defendant Google, Inc. promptly filed a complaint requesting transfer of the Domain Names pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP) incorporated into the domain name registrar's Terms of Use. Responding to Defendant's arbitration complaint, plaintiff Gillespie asserted that the GOOGLE mark has become generic and that he should be permitted to use the Domain Names incorporating the GOOGLE mark in furtherance of his business plans. The UDRP panel ordered the Domain Names be transferred to Defendant because: the Domain Names were confusingly similar to the GOOGLE mark; Gillespie has no rights or legitimate interests in the Domain Names; and the Domain Names were registered and used in bad faith. Plaintiff Elliott then instituted the present action by filing a complaint, which was amended to include Gillespie as a Plaintiff, seeking cancellation of both the '502 and '075 marks and a declaration of the same (the '502 and '075 Google marks refer to the eponymous search engine service provided by Defendant). After completing discovery, the parties filed cross-motions for summary judgment on the issue of whether the '502 and '075 Marks are invalid because they are generic.

Issue:

Was the Defendant’s GOOGLE mark a generic mark, and hence, invalid?

Answer:

No.

Conclusion:

The federal district court noted that the word “google” has four possible meanings in this case: 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. According to the Court, the '502 and '075 marks were subject to cancellation only if the fourth meaning was the primary significance of the word google to a majority of the consuming public. There was no evidence to suggest that the primary significance of the word google was the fourth meaning. Moreover, the Court found that majority of the public construed the word google as a verb to refer to searching on the interest, however, despite this fact, there was no genuine dispute about whether, with respect to searching on the internet, the primary significance of the word google to a majority of the public who utilize internet search engines was a designation of the Google search engine. Therefore, Google marks were not generic.

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