David Elliott v. Google Inc.

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, OPINION

Defendant-Appellee.

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

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 THERMOS 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 thermos 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);

King-Seeley Thermos Co. v. Aladdin Indus., 321 F.2d 577,

579 (2d Cir. 1963). The original holders of the ASPIRIN,

CELLOPHANE, and THERMOS 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

8 ELLIOTT V. GOOGLE

erred when it granted summary judgment for Google. First,

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

ELLIOTT V. GOOGLE 9

internet, and argues that the district court erred when it

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

10 ELLIOTT V. GOOGLE

a term may be unprotectable with regard to one type of good,

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

ELLIOTT V. GOOGLE 11

and still use the term in a source-identifying trademark

sense.

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

12 ELLIOTT V. GOOGLE

generic use. 3 Moreover, the district court aptly coined the

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

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-

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

genericide and the sufficiency of his proffered evidence

under the proper inquiry.

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.

4

In making this assumption, the district court drew a favorable (and

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.,

321 F.2d at 579 (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 a

jury anything 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.