[co-author: Payton Miles, Summer Associate]

One of the signs of a healthy trademark is a certain level of distinctiveness. Distinctiveness is related to consumers’ love and recognition of a mark as an indicator of a product’s source, such that consumers trust the mark to distinguish one producer’s products from those of another. Trademarks are usually classified into one of five levels of distinctiveness: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive, and (5) generic.

Generic marks, at the bottom of the list, are doomed from the start—because they identify a category of goods, they are never entitled to trademark protection. For example, a company using the word mark GAS for a gas station would not be able to claim trademark rights in the mark because it may restrict third parties’ ability to describe their own goods/services, impinging the free market.

But what happens when a brand that was once thriving in the market is loved a little too much, and slides from one of the more distinctive categories to become generic? Known as “genericide,” this occurs when a mark becomes associated with a type of good or service in the mind of consumers, rather than associated with a particular brand, or source of that good or service. Under Section 45 of the Lanham Act, a mark that has lost its significance as an identifier of a single source becomes abandoned due to a loss of distinctiveness. Different types of evidence—dictionary definitions, generic use of the term by competitors in the relevant market, a mark owner’s own generic use of their mark, generic use in the media, and consumer surveys—can be considered when determining whether a mark has become generic.

The 9th Circuit case Elliott v. Google, Inc. considered a claim that a famous mark had lost its distinctiveness over time due to its use by the public. In this case, an individual named Chris Gillespie registered 763 domain names that included the word “google”; in a complaint filed with the National Arbitration Forum (NAF), Google claimed that the domain names were confusingly similar to the GOOGLE trademark and were registered in bad faith. NAF agreed and transferred the domain names to Google. Soon after, the defendant Chris Gillespie joined David Elliott in a district court action petitioning to cancel federal registrations for the GOOGLE trademark under Section 14 of the Lanham Act, arguing that the term “google” had become generic to the relevant public. Specifically, the defendants alleged that the word “google” was primarily used as a verb to refer to the act of searching the internet, rather than as a mark to identify a specific search engine. The district court granted Google summary judgement, based on Google’s argument that verb use as a mark cannot be considered generic use, and Elliott and Gillespie appealed.

The 9th Circuit recognized that the appellants had the burden of proof, by a preponderance of the evidence, that the GOOGLE trademark registrations should be cancelled due to genericide. The appellants pointed to three customer surveys, generic use of the mark by the media and by consumers, generic use of the mark by Google, and dictionary definitions as evidence of genericide. While the 9th Circuit agreed that the appellants’ evidence supported an inference that a majority of the public used the verb “google” in a generic way, the Court did not find that this, alone, was sufficient to support a claim of genericide, because a claim of genericide must relate to a particular type of good or service being identified primarily by a specific mark. The appellants did not show that there was no other way to identify “internet search engines” without referring to them as “googles” in the generic sense. Therefore, the 9th Circuit found that they failed to provide evidence to support a finding that the relevant public primarily uses the word “google” as a generic name for internet search engines rather than as a mark identifying the Google search engine specifically.

Other examples of cases that consider whether a mark has been the subject of genericide and abandonment due to lack of distinctiveness include:

• E. I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975) (holding that the mark TEFLON is not a generic term used to refer to non-stick pan coatings, because surveys suggested that the relevant public could differentiate between the source and the good/service).
• Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (holding that the mark ASPIRIN became generic after the relevant public associated the mark with the drug itself rather than Bayer as the manufacturer).
• KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005) (holding that the relevant public’s use of the mark MICRO-COLORS as a brand name rather than a generic term and Lasting’s own use of their federally registered trade name MICRO-COLORS as a brand name was evidence that the MICRO-COLORS mark was not a generic term).

Genericide can be avoided if trademark owners take necessary steps to protect the rights in their marks from the start. For example, trademark owners should periodically police third party and public use of their marks (i.e., news articles) for correct use. Brand owners should also take care to properly use their own marks, displaying them in a way that distinguishes the mark from surrounding text, whether by use of capital letters, different color or style of font, and/or via use of the trademark symbol. Genericide can also be avoided through corrective advertising, to remind consumers that the mark is a brand name. Trademark owners should also be aware of the level of distinctiveness that a new mark may be accorded from the beginning—because you can’t lose something you never had.

The last part of our series will discuss naked licensing, when mark owners do not maintain sufficient control over the way their marks are used—check back soon!