9th Cir.;
15-16809

The court of appeals affirmed a judgment. The court held that the plaintiff failed to show that the GOOGLE trademark had become so generic as to have forfeited trademark protection.

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.” Google, Inc. objected to these registrations and filed a complaint with the National Arbitration Forum, arguing the domain names are confusingly similar to the GOOGLE trademark and were registered in bad faith. The NAF agreed, and transferred the domain names to Google. David Elliott, joined by Chris Gillespie filed suit, seeking cancellation of the GOOGLE trademark under the Lanham Act, at 15 U.S.C. §1064(3), 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.” Elliott contended that the word “google” is primarily understood as “a generic term universally used to describe the act of internet searching.”