United States: Avoiding "Genericide": Lessons From A Recent Case

When does a trademark stop being a trademark? ASPIRIN, CELLOPHANE and ESCALATOR are all examples of words that were once trademarks, but ultimately came to be used and understood by the public as the names for the products themselves, not as specific brands indicating the sources of those products. When potential customers think of a trademark as a term for the category of products, the trademark becomes generic and is no longer entitled to protection. This loss of trademark rights is known as "genericide." A recent case, Elliott v. Google, provides insight into how genericide can occur — and how it can be avoided.

In October 2017, the U.S. Supreme Court refused, without opinion, to hear a claim that the GOOGLE trademark had become a victim of genericide, based on the widespread use of GOOGLE to refer to internet searching (for example, "I googled it"). The petitioner, David Elliott, had attempted to register a number of Google-inclusive domain names, such as googledisney.com and googlebarackobama.net. After Google successfully challenged the registrations in Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings, Elliott sued in Arizona federal district court to cancel the GOOGLE trademark on the ground that it had become generic. The district court had earlier granted summary judgment for Google, and the Ninth Circuit affirmed.

Genericide by "Verbing"

Elliott's main argument, both in the district court and on appeal, was that GOOGLE had automatically become generic when it entered common use as a verb to mean the act of searching on the internet (a process Elliott referred to as "verbing"). According to Elliott, a word could function as a trademark — identifying the source of a product or service — only when used as an adjective modifying the generic noun for the type of product or service (for example, "Kleenex tissues" or "Nike sneakers"). Because the public used "google" primarily as a verb, the GOOGLE trademark could no longer function as a source identifier for Google's search engine.

There has been a history of some trademarks falling into common use as generic nouns for products or services, resulting in genericide. For example, consumers referred to "taking an aspirin," not "taking an ASPIRIN pain reliever." Often, these uses became common because the brand was prominent in the market, so that customers thought of it as synonymous with the product itself. Eventually, the brand became a victim of its own success, losing its association with a single source. Trademark owners concerned with generic noun use have emphasized the distinction between the trademark and the product to "recapture" the trademark's source-identifying significance, as in Band-Aid's advertising campaign: "I am stuck on Band-Aid brand and Band-Aid brand is stuck on me."

Elliott's argument attempted to extend these generic noun cases to a categorical rule that all trademarks used as either nouns or verbs were generic. According to him, trademarks that had become commonly used as nouns — such as ASPIRIN, CELLOPHANE and THERMOS — or as verbs — such as ROLLERBLADE, XEROX, PHOTOSHOP, TIVO, FEDEX and FACETIME — had automatically lost their trademark status.

Both the district court and the U.S. Court of Appeals for the Ninth Circuit rejected this argument. As the Ninth Circuit noted, nothing in the Lanham Act or its legislative history limits trademark use to any particular part of speech or grammatical function. Moreover, consumers may use a trademark as either a noun or verb while continuing to associate it with a specific source for a product or service. For example, in Coca-Cola Company v. Overland, the Ninth Circuit had found that restaurant customers who ordered "a coke" (using Coke as a noun) were not necessarily using the name in a generic sense to mean a carbonated or cola-flavored beverage; they might well have been thinking of Coca-Cola in particular.

Similarly, a consumer who referred to "googling something" could mean using Google's search engine (what the court called "discriminate" verb use) or just any search engine ("indiscriminate" verb use). Verb use alone was not enough to prove that the public had stopped associating GOOGLE with Google's search engine.

Primary Significance: The Test for Genericness

Elliott's argument also failed to recognize that, under the Lanham Act's "primary significance" test for genericness, a claim of genericide must relate to a particular good or service. Even if a majority of the public primarily used "google" in the "indiscriminate" sense, to mean the act of searching on the internet (as the district court assumed for purposes of summary judgment), that was not enough to prove genericide. Elliott had to prove that the public primarily understood GOOGLE as a generic term for search engines. Elliott's expert and survey evidence, however, focused on proving that the public used GOOGLE primarily as a verb, not that it was generic for search engines or any other good or service. Google, on the other hand, introduced surveys showing strong public recognition of GOOGLE as a brand.

Pointers for Protecting Brand Rights

The Elliott case is clearly good news for trademark owners concerned about erosion of their brand rights through "indiscriminate" use by the public. Although the Ninth Circuit did not mention other marks that are often used as verbs (such as XEROX, FEDEX and PHOTOSHOP), owners of these marks might be able to worry less about such use as a result of the ruling. Because trademark rights lost to genericide are difficult if not impossible to recapture, however, all trademark owners should take steps to maintain the strength of their brands. (For a rare case in which lost trademark rights were revived, see Singer Manufacturing v. Briley, where Singer Manufacturing re-established SINGER as a trademark for sewing machines through advertising and public education after the mark had fallen into generic use.)

Here are important takeaways from Elliott, and other practical tips for protecting brand rights:

  • Elliott underscores the benefits of U.S. trademark registration. As the Ninth Circuit noted, Google's registration entitled it to a presumption that GOOGLE was not generic, placing a heavier burden of proof on Elliott. In some cases, this evidentiary burden could make the difference between a win and loss for the trademark owner. See Filipino Yellow Pages v. Asian Journal Publications. (There, the owner of an unregistered mark had the burden of proof that the mark was not generic.)
  • Although it rejected the genericide claim in Elliott, the Ninth Circuit did not hold that verb use could never be relevant to show that a mark was generic. Under different circumstances, the court noted, verb use, like noun use, could be evidence that the public primarily understands a mark to refer to a type of good or service. Preferred trademark use should still be as an adjective, followed by the generic name of the product or service (for example, "ROLLERBLADE inline skates" or "PHOTOSHOP photo editing software").
  • Trademark owners should be careful to use their own marks in a way that emphasizes their trademark significance, not in a generic sense. Although Elliott tried unsuccessfully to show that Google used its own mark generically, other marks have been found to be generic where the owner used the mark to refer to the type of goods or services offered. See e.g. Boston Duck Tours v. Super Duck Tours (use of DUCK TOURS to refer to amphibious tour services) and Pilates v. Current Concepts. (use of PILATES to refer to exercise method and equipment).
  • Employees, licensees, distributors and contractors — as well as potential customers and the general public — should be educated about the proper use of the brand and its distinction from the product or service being offered.
  • In written advertisements and marketing materials (including websites and online advertising), trademark owners should use the registered trademark symbol (®) after the trademark, if it is registered, and the trademark symbol ("), if it is unregistered.
  • Trademark owners should display the trademark so as to distinguish it from surrounding text, for example, by using a different font or color, larger or bold type, and/or capitals. (For example, BAND-AID® appears in large, red capital letters above the words "brand adhesive bandages" in smaller type.)
  • Trademark owners should avoid using trademarks as plural nouns, which can suggest generic use ("Kleenex tissues" instead of "Kleenexes"; "Nike sneakers" instead of "Nikes").
  • Ongoing policing and enforcement efforts can help to combat a claim of genericide. In Elliott, the Ninth Circuit noted Google's proactive policing of its trademark as weighing in favor of trademark significance. Other marks have lost protection when their owners failed to police them. See e.g., BellSouth v. DataNational (a case that dealt with AT&T's "Walking Fingers" logo for telephone directories).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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