Court: ‘GOOGLE’ Not A Generic Trademark. Lessons Trademark Owners Should Learn About Genericide.

By Josh Gerben, Esq.

Genericide. The death of a trademark. It may sound dramatic and for a trademark owner, it is. It means that the trademark owner’s once strong and powerful trademark is now available for everyone to use. In the trademark law context, genericide, or the conversion of a trademark into a generic phrase, occurs when a trademark becomes the generic word for the product or service the trademark is associated with.

All of these generic words were once exclusive trademarks:

Cellophane for “transparent cellulose film.”

Aspirin for the headache medicine.

Murphy Bed for a fold-up wall bed.

Thermos for an insulated beverage container.

Yo-Yo for the toy.

Escalator for the mechanical stairs.

But what about “google” for searching the web?

In a recent case before the Ninth Circuit, the court held that “google” was not a generic term and was a protectable trademark, re-affirming that even if a trademark is widely-used by the generic public as a verb, that does not mean that the trademark is considered generic.

The Plaintiff, David Elliot, purchased over 700 domain names with the word “Google” in them. After Google successfully won a domain name dispute, Elliot filed to cancel Google’s trademarks. The district court dismissed the claims and the Ninth Circuit affirmed the dismissal.

While the Ninth Circuit confirmed what many people thought—that “Google” is a strong, protectable trademark, the case shines a spotlight on what trademark owners need to be aware of when promoting and protecting their own brands. While Google may have won this one, the owners of the trademarks mentioned above weren’t as successful, and lost valuable trademark rights because of it.

Generic Words Cannot Function as Trademarks

Generic words or phrases cannot be trademarks, because the public would never think that the generic word is connected to one specific company. From a business perspective, generic terms are simply too useful for identifying a particular product and granting a single company a monopoly over a generic term would give that company too great of a competitive advantage. When deciding the “generic” word for a product, think of what you would call the unbranded version of that item. The generic term for an iPhone is a mobile phone or cellular phone. The generic term for a Dell is a computer. When there are little to no other basic names for a product, you’ve likely found the generic term.

However, this is contrasted with descriptive terms, which can act as a trademark, but only after the user has effectively promoted the trademark so that, when consumers think of the descriptive word in connection with specific products (or services), they only think of that one “source.” For example, American Airlines is an airline based in America. However, from decades of use and promotion, they now enjoy exclusive rights in the phrase. “National” for a nationwide car rental chain is another example. American Airlines, however, will never be able to own just the word “Airlines” because the word is generic for a flight-provider.

Genericide – What happens once a trademark becomes generic?

Unfortunately for the trademark owner, once a trademark becomes generic it loses its trademark protection and it becomes available to the public. This means that competitors gain the freedom to refer to their products using the genericized word because that word no longer represents the source of a service, it now represents the product and/or its general category.

However, this is never an overnight thing. It takes years and years before a trademark becomes generic through genericide. Also, if a trademark becomes generic, it only becomes generic for specific goods and services. A thermos might be the generic name for an insulated beverage container, but THERMOS® is still a protectable outdoors/leisure brand for a number of other, non-generic products. Genericism is not a free-ride to use a competitor’s trademark.

How to avoid genericism

There are various approaches companies can adopt to prevent their trademark from becoming generic. As much and whenever possible, companies should really focus on educating the consumer that their mark is the source of the product, not the product itself. Early, on, companies can establish guidelines for the use of their mark, such as determining how their trademark will be used and displayed in commerce – whether it will always carry the ® or ™ signs, or whether it will be used as a verb or noun (which was Elliott’s claim against Google).

Another way to prevent trademarks from becoming generic is to advertise the trademark or brand name along with the general term, instead of just the trademark. For example, “Jell-O gelatin” or “Kleenex® Brand Tissue.” If possible, companies that can afford to run advertising campaigns should adopt slogans that explain their intended use of their mark. For instance, Xerox’s advertising campaign reads: “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.”

Companies like Xerox take such steps and go even further by requiring their licensees that their name not be used as a verb. Their licensing agreements for example, require businesses to refer to the action their products serve as “copying” rather than “Xeroxing.” They do so because it is crucial to educate not just the consumer, but also the company’s distribution network of the proper and intended use of the mark.

Finally, once a trademark is in danger of becoming generic, while it is possible to reverse the process, it can take years and a significant amount of money. And even so, it is not guaranteed to work.

Takeaway

When difficult to assume the high costs of advertising campaigns, trademark owners can prevent genericism of their marks by starting off on the right foot. Setting clear guidelines as to brand name use from the very beginning is likely to educate consumers as to the right use of the mark without having to make unnecessary expenditures on revival ad campaigns.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.