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

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

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.

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

Written by:

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.