Should public use of the word “google” as a verb cost Google, Inc. (Google) its right to trademark protection? No, according to a recent decision from the Ninth Circuit Court of Appeals. In affirming summary judgment in favor of Google, the court found insufficient evidence that “the relevant public primarily understands the word ‘google’ as a generic name for internet search engines and not as a mark identifying the Google search engine in particular.”
This dispute began in 2012 after Chris Gillespie acquired 763 domain names containing the word “google.” Google, believing that the domain names were too similar to the company’s trademark, filed a complaint with the National Arbitration Forum (NAF) alleging domain name infringement, or cybersquatting. The NAF, which had authority to decide certain disputes under the applicable user agreement, found in favor of Google and transferred the domain names to the company. Subsequently, David Elliott filed a suit in federal district court seeking cancellation of the Google trademark on the ground that the mark had become generic. Gillespie later joined the suit.
Elliott and Gillespie argued that the public primarily understands the word “google” as referring to the act of searching the Internet, rather than referring to Google as a specific search engine. In its response, Google framed the argument differently and sought summary judgment on the ground of insufficient evidence showing that the public understands “google” as a generic name for all search engines. The district court granted summary judgment in favor of Google, and Elliott and Gillespie appealed to the Ninth Circuit Court of Appeals.
The Lanham Act, the federal statute governing trademarks, states that registration of a mark can be canceled “if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered….” The registered mark is considered generic if its primary significance to the relevant public is as the name of a type of goods or services, rather than the name of a particular good, service, or source of goods and services. In Elliott, the Ninth Circuit described this rule as the “who-are-you/what-are-you” test. If the relevant public understands the mark as primarily describing “who” the good or service is or where it comes from, then the mark remains valid. But if the relevant public understands the mark as describing “what” the good or service is, then the mark is generic and therefore subject to cancellation.
Applying the Lanham Act, the Ninth Circuit upheld the grant of summary judgment in favor of Google. The court explained that the relevant question regarding Google’s trademark is not whether the public regularly uses the mark to describe the act of searching the Internet. Rather, the relevant question is whether, under the primary significance test, the mark has become known as a generic name for a certain type of goods or services, namely Internet search engines. As there was insufficient evidence that the relevant public uses the word “google” to refer generally to all Internet search engines, the court held that the registered mark is not generic and remains valid.
For more information on the Lanham Act, see O’Connor’s Federal Intellectual Property Codes Plus.
 Elliott v. Google, Inc., ___ F.3d ___ (9th Cir.2017) (No. 15-15809; 5-16-17).
 See 15 U.S.C. §1064(3).
 See id.; Elliott, ___ F.3d at ___; see, e.g., King-Seeley Thermos Co. v. Aladdin Indus., 321 F.2d 577, 581 (2d Cir.1963) (word “thermos” was generic because primary significance to public was as a type of product); Bayer Co. v. United Drug Co., 272 F. 505, 510-12 (S.D.N.Y.1921) (word “Aspirin” became part of public domain as consumers understood word to reference a type of product rather than a specific source).
 Elliott, ___ F.3d at ___.
 See id.