Aspirin. Escalator. Trampoline. Three generic words with seemingly nothing in common. Those words, along with many others, were once legally protected trademarks. When a company’s mark becomes the generic name for its product or service, it can lose its trademark registration which can be extremely damaging to the company. A recent 9th Circuit decision upholding Google’s trademark may help other trademark owner’s avoid suffering a generic fate.
Under Section 14 of the Lanham Act registration of a mark can be canceled if it “becomes the generic name for the goods or services for which it is registered.” A key purpose of trademark law is to enable consumers to identify the source of a good or service. If a mark has become the generic term for the good or service, it no longer serves as a source identifier and may no longer be protectable as a trademark.
As Jacqueline Stern stated, “The traditional standard for determining genericness is based on how the public perceives the contested mark—whether consumers understand the mark to mean only a type of product, or whether they recognize the name as being source indicative.” At first glance, it may seem that genericide is largely in the hands of consumers as companies only have so much control over how the public uses their brand. However, the Google decision indicates that there is more that companies can do.
Elliott v. Google
In 2012, the Plaintiffs registered over 700 domain names containing the word google prompting Google to file a complaint in compliance with the Uniform Domain Name Dispute Resolution Policy. The Plaintiffs in turn argued that “Google” had become generic and sought cancellation of the trademark in federal court claiming that the public understood the mark to mean searching the web, rather than using a specific search engine. This year, the U.S. Court of Appeals in San Francisco upheld the decision of the lower court that the Plaintiffs did not present enough evidence to show that “googling” was generic for internet search engines. Last month, the Supreme Court denied certiorari on this issue.
Lessons on Avoiding Genericide
Currently, standard guidance says that companies, among other things, should (i) work to use the generic name of the good with the brand name, (ii) offset the brand in a specific font, (iii) use the proper Trademark designations (® or TM), and (iv) not to use a trademark as a verb. However, the Google case suggests that it may not be enough to resist the public’s inclination to adopt the brand as a verb. Brands should take a proactive role in educating the public on how to properly use the brand name as a way to work against genericide. Several brands that were at risk of genericide have run advertising campaigns geared towards re-educating the public about proper use of their brand. Xerox reminded consumers that, “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.” Recently, Velcro launched a “Don’t say Velcro” campaign designed to educate the public on how to properly use their brand. These efforts could potentially benefit the company if the brand is ever brought to trial over genericide. In Elliott v. Google, the court found that Google’s policing activities in discouraging publications from using the term “googling” cut against the Plaintiffs’ case for genericide.
Public Benefit Considerations
There may be significant value to the public in finding gerenicism of brand verbing. The court in Ty Inc. v. Perryman observed that there is a social benefit when a mark becomes generic. Brand verbing and genericide may lead to an expansion of language as a number of words now commonly used today began as trademarks. Brand verbing may fill significant language gaps and prevent communication break downs as well as improve efficiency. However, given the recent denial of certiorari, the 9th Circuit decisions stands.