Law School Case Brief
Elliot v. Google Inc. - 45 F. Supp. 3d 1156 (D. Ariz. 2014)
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.
Was the Defendant’s GOOGLE mark a generic mark, and hence, invalid?
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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