United States District Court, D. Arizona
MEMORANDUM OF DECISION AND ORDER
STEPHEN M. McNAMEE, District Judge.
Before the Court are Plaintiffs David Elliot's ("Elliot") and Chris Gillespie's ("Gillespie") (collectively "Plaintiffs") and Defendant Google Incorporated's ("Defendant") fully briefed cross-motions for summary judgment. (Docs. 67; 73; 83; 86; 111; 112.) For the reasons that follow, Plaintiffs' motion is denied and Defendant's motion is granted.
The following facts are undisputed unless otherwise noted. This case concerns two United States registrations of the GOOGLE mark: Number 2884502 (the "502 Mark") and Number 2806075 (the "075 Mark"). The 502 Mark covers "computer hardware; computer software for creating indexes of information, indexes of web sites and indexes of other information resources." (Docs. 68 ¶ 18; 87 ¶ 18.) The 075 Mark covers, inter alia:
Computer services, namely, providing software interfaces available over a network in order to create a personalized on-line information service; extraction and retrieval of information and data mining by means of global computer networks; creating indexes of information, indexes of web sites and indexes of other information sources in connection with global computer networks; providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, by means of global computer information networks.
(Docs. 68 ¶ 19; 87 ¶ 19.) It is undisputed that the 502 and 075 GOOGLE marks refer to the eponymous search engine service provided by Defendant (the "Google search engine").
Elliot then instituted the present action by filing a complaint (Doc. 1), which was amended to include Gillespie as a Plaintiff (Doc. 25), seeking cancellation of both the 502 and 075 marks and a declaration of the same. Defendant's answer alleged counterclaims for trademark dilution, cybersquatting, and unjust enrichment under the Lanham Act, as well as counterclaims for unfair competition and false advertising under California state law. (Doc. 28.) 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.
STANDARD OF REVIEW
"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). "[T]he substantive law will identify which facts are material[;] [o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986). "One of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses." Celotex Corp. v. Catrett , 477 U.S. 317, 323-24 (1986) (further quotation omitted).
The movant bears the initial burden of proving the absence of a genuine issue of material fact. Id. at 323. For issues on which the movant would bear the burden of proof at trial, the initial summary judgment burden is met by marshaling the evidence to foreclose the possibility that a reasonable jury could find for the non-movant. Adickes v. S. H. Kress & Co. , 398 U.S. 144, 157-58 (1970). Where the non-movant would bear the burden of proof at trial, the movant may carry its initial burden by proving the absence of evidence to support the non-movant's case. Celotex , 477 U.S. at 325. If the movant carries its initial burden, the non-movant must designate "significantly probative" evidence capable of supporting a favorable verdict. Anderson , 477 U.S. at 249-50.
In determining whether either or both of these burdens have been carried, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in [that party's] favor." Anderson , 477 U.S. at 254; see Narayan v. EGL, Inc. , 616 F.3d 895, 899 (9th Cir. 2010) (explaining an inference is justifiable if it is rational or reasonable). "Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge... ruling on a motion for summary judgment." Anderson , 477 U.S. at 255.
Plaintiffs contend the GOOGLE mark has become generic because a majority of the public understands the word google, when used as a verb, to mean the indiscriminate act of searching on the internet without regard to the search engine used. Underlying Plaintiffs' argument is the proposition that verbs, as a matter of law, are incapable of distinguishing one service from another, and can only refer to a category of services. Defendant contends there is no admissible evidence capable of supporting a finding that a significant portion, let alone a majority, of the consuming public does not principally understand the GOOGLE mark to identify a distinct product, regardless of how the mark is employed grammatically.
In ruling on Plaintiffs' motion, the Court accepts as true Defendant's admissible evidence and draws all reasonable inferences in Defendant's favor; in ruling on Defendant's motion, the Court accepts as true Plaintiffs' admissible evidence and draws all reasonable inferences in Plaintiffs' favor. The Court first resolves the chief legal disagreement between the parties (whether verb use of a mark necessarily renders the mark generic) and the admissibility of expert evidence before proceeding to the ultimate issue of whether either party is entitled to summary judgment on whether the GOOGLE mark has become generic.
I. Grammatical Function and Genericness
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. § 1064(3); accord Park N Fly, Inc. v. Dollar Park & Fly, Inc. , 469 U.S. 189, 194 (1985). "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. § 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." Kellogg Co. v. National Biscuit Co. , 305 U.S. 111, 118 (1938); see Bayer Co. v. United Drug Co. , 272 F. 505, 509 (S.D.N.Y. 1921) ("What do the buyers understand by the word for whose use the parties are contending?"). "[I]f 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." Rudolph Int'l, Inc. v. Realys, Inc. , 482 F.3d 1195, 1198 (9th Cir. 2007) (quoting Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc. , 198 F.3d 1143, 1147 (9th Cir. 1999)).
The crux of Plaintiffs' argument is the premise "a trademark ceases to function as such when it is used primarily as a verb." (Doc. 111 at 2) (emphasis omitted). This premise is flawed: a trademark performs its statutory function so long as it distinguishes a product or service from those of others and indicates the product's or service's source. See 15 U.S.C. § 1127. Verb use of a trademark is not fundamentally incapable of identifying a producer or denoting source. A mark can be used as a verb in a discriminate sense so as to refer to an activity with a particular product or service, e.g., "I will PHOTOSHOP the image" could mean the act of manipulating an image by using the trademarked Photoshop graphics editing software developed and sold by Adobe Systems. This discriminate mark-as-verb usage clearly performs the statutory source-denoting function of a trademark.
However, a mark can also be used as a verb in an indiscriminate sense so as to refer to a category of activity in general, e.g., "I will PHOTOSHOP the image" could be understood to mean image manipulation by using graphics editing software other than Adobe Photoshop. This use commandeers PHOTOSHOP to refer to something besides Adobe's trademarked product. Such indiscriminate mark-as-verb usage does not perform the statutory trademark function; instead, it functions as a synecdoche describing both a particular species of activity ( e.g. using Adobe's PHOTOSHOP brand software) and the genus of services to which the species belongs ( e.g. using image manipulation software in general).
It cannot be understated that a mark is not rendered generic merely because the mark serves a synecdochian "dual function" of identifying a particular species of service while at the same time indicating the genus of services to which the species belongs. S. Rep. No. 98-627,  at 5 (1984), reprinted in 1984 U.S.C.C.A.N. 5718, 5722 (explaining "dual function" use "is not conclusive of whether the mark is generic"); accord 15 U.S.C. § 1064(3) ("A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service."). Nor is a mark "generic merely because it has some significance to the public as an indication of the nature or class of an article.... In order to become generic the principal significance of the word must be its indication of the nature or class of an article, rather than an indication of its origin." Feathercombs, Inc. v. Solo Prods. Corp. , 306 F.2d 251, 256 (2d Cir. 1962) (emphasis added). Moreover, "casual, non-purchasing uses of [marks] are not evidence of generic usage" because primary significance is determined by "the use and understanding of the [mark] in the context of purchasing decisions.'" 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:8 (4th ed. 2014) (quoting Restatement (Third) of Unfair Competition § 15 cmt. c (1995)) [hereinafter "McCarthy"].
"The salient question is the primary significance of the term to the consumer. If the term indicates a product of a single producer to the consumer, it is a valid trademark." S. Rep. No. 98-627, at 5, reprinted in 1984 U.S.C.C.A.N. 5718, 5722. Thus, even if a mark qua verb is used exclusively in the indiscriminate sense, the mark is not generic if a majority of the consuming public nevertheless uses the mark qua mark to differentiate between one particular product or service from those offered by competitors.
A genericism inquiry guided by grammatical formalism is incompatible with the intent of the Lanham Act and its subsequent amendment by the Trademark Clarification Act. The twofold justification for the Lanham Act as stated by the Senate Committee on Patents was: (1) "to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get"; and (2) "where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats." S. Rep. 1333, at 1 (1946), reprinted in 1946 U.S. Code & Cong. Serv. 1274, 1274.
The benefits derived from protecting trademarks include fostering market competition by enabling a consumer to distinguish competing articles from each other; and encouraging quality by "securing to the producer the benefit of the good reputation which excellence creates." Id. at 2, reprinted in 1946 U.S. Code & Cong. Serv. 1274, 1273. The same was true nearly 40 years later: "Because of their importance to our nation's commerce, trademarks long have been protected from appropriation and misuse by others, both to protect the consumer from deception and confusion and to insure that producers are rewarded for their investment in the manufacture and marketing of their product." S. Rep. No. 98-627, at 2, reprinted in 1984 U.S.C.C.A.N. 5718, 5719.
It is thus contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark-cultivated by diligent marketing, enforcement, and quality control-has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs. As one scholar has stated, "top-of-mind use of a trademark in its verb form, far from indicating the mark's generic status, may well indicate the enduring fame of the brand." Laura A. Heymann, The Grammar of Trademarks, 14 Lewis & Clark L. Rev. 1313, 1348 (2010). This is especially true where the mark in question is arbitrary or fanciful because such terms had a different or no independent meaning before they were adopted as marks. See Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc. , 618 F.3d 1025, 1032-33 ...