Life in the Lowercase Lane: Lessons for Trademark Owners About Genericide

by Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

Death by genericide is a painful way to go, for trademarks that is. When the public comes to think of a trademark as the common word for a product or service -- as opposed to identifying its exclusive source -- the trademark loses its distinctiveness, and the owner loses the ability to exclude others from using it. Essentially, it becomes worthless. Former brands like ZIPPER, ASPIRIN, TRAMPOLINE, and ESCALATOR, to name a few, have lost their "badge of origin" and are now simply part of the lexicon of everyday words - the lowercase ones, carrying no commercial value.      
                                                   
Don’t Worry -- Google is Still a Trademark!
 
Google recently faced a genericness challenge to its ubiquitous GOOGLE brand; the challenge was a result of Google’s successful Uniform Domain Name Dispute Resolution Policy action against an individual who registered 763 domain names that included the GOOGLE mark. Google prevailed in the action, and the panel issued an order requiring that the names be transferred to Google. In response, the domain name registrant sued to cancel Google's trademark registrations on the basis that the GOOGLE mark had become generic given its widespread common use as a verb for the act of "searching the internet." 
 
The court disagreed, stating that "[e]ven if we assume that the public uses the verb 'google' in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to Internet search engines." Essentially, the court determined that so long as the "primary significance" of the term "Google" is understood by the public as a brand name, as opposed to a common term, it can continue to function as an exclusive trademark. The domain name holder appealed the decision, and U.S. Court of Appeals for the 9th Circuit affirmed the lower court's decision that the famous GOOGLE trademark has not become generic, but is a valid and enforceable trademark. Elliott v.Google, Inc., Case No. 15-15809 (9th Cir.).
 
Protecting the "Primary Significance" of a Trademark
 
The Google case reminds us that even strong brand names can lose their trademark significance through the public's systematic misuse. Unless this misuse is properly managed and challenged on a consistent basis, it can ultimately result in the loss of trademark rights. Not every brand is as famous as GOOGLE, and can survive misuse by the public – just look at the examples above! Given how much is on the line, all brand owners should keep the lessons of this case in mind as they plan and execute brand protection strategies in an effort to protect the "primary significance" of their marks.

  • Use the trademark as an adjective along with the common product name, such as WINDEX® window cleaner or XEROX® copy. While verb use or noun use is not an automatic trademark death sentence, it's a slippery slope and one best avoided.
  • Display trademarks in a distinctive manner, such as a stylized format or in all caps, and use proper markings, i.e. TM, SM, or the circle R, to signify its legal protection. 
  • Create brand usage guidelines that explain how the mark should be used in commerce, what markings it should bear, and make the guidelines easily accessible for your customers. APPLE® does a great job at this. 
  • Place advertising campaigns and use marketing collateral to support your brand message. Xerox aggressively protects its corporate house mark with this strategy, including in the following ad copy: "If you use 'Xerox' the way you use 'zipper,' our trademark could be left wide open. There's a new way to look at it."     
  • Monitor third-party misuse through watch services, keyword searches, and online research, and then pursue the misuse through demand letters and/or legal action when necessary. 
  • Monitor use in the media, and politely remind publications of how to correctly refer to the mark.

Takeaway
 
Whether starting out, or managing an established brand, the trademark owner is responsible for protecting the integrity of the brand through managing its use and challenging its misuse. Establishing clear standards for how the brand should be used, consistently following those standards, and routinely enforcing them against improper use will help to safeguard against any unwitting erosion of trademark rights, and ultimately, the death throes of genericism.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Sterne, Kessler, Goldstein & Fox P.L.L.C. | Attorney Advertising

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