What do Aspirin, Hoover, Escalator, Cellophane and Linoleum have in common? They were once protected trademarks but you will find them engraved on headstones in the trademark graveyard. The cause of “death”? Genericide, which happens when brands become the colloquial or generic description for a product or service in a particular class. Google had a recent bout with genericide and only last week a US federal appeals court ruled in its favour.
Trademarks are used by companies and manufacturers to distinguish their goods from others. The challenge for companies and manufacturers is the active defence of their trademark against competitors who use either an identical or similar mark in an attempt to take custom from the true owner of the mark and benefit from the success of the true owner of the mark. Companies put in a lot of resources developing their mark –ensuring the quality of their product, marketing their product and managing the reputation of the product. Trademark law protects companies and manufacturers from competitors trying to cash in on the success of their trademark.
Trademarks must be distinctive, not merely descriptive. In other words, the mark cannot merely describe the goods or services or their characteristics. The mark must be able to distinguish goods or services of one company from those of another. For this and other reasons, mark owners must police their trademarks to prevent them from ending up in the trademark graveyard. Savvy brand management is essential to ensuring that the trademark does not fall victim to genericide. Genericide is not the only way that companies lose protection of their trademark. Non-use over a period will also cause the mark to lose its protection under intellectual property laws.
There is no doubt that Google has become the generic term for conducting a search on the internet. But a court has decided that Google Inc. still enjoys trademark protection over Google. Trouble for the trademark started when in 2012 one Chris Gillespie registered 763 domain names that included the word “google”, for example, “googledisney.com,” “googlebarackobama.net,” and “googlenewtvs.com.” Now this can probably be described as cybersquatting at its most nauseating level. Google, as expected, objected to these registrations and filed a complaint, arguing that the domain names were confusingly similar to the Google trademark and had been registered in bad faith. Google was successful in their complaint with the National Arbitration Forum. Subsequently, a suit was filed in District Court by David Elliott and Chris Gillespie, asking for the cancellation of the Google trademark on the grounds that the word Google is now primarily understood and used as a generic term to describe the act of internet searching. Essentially, the plaintiffs argued that the word Google had now become a verb, as in “I googled it.” The District Court rejected their argument and the plaintiffs appealed.
In the Court of Appeal (Ninth Circuit) the decision of the District Court was upheld. Stating the opinion of the Court, Justice Richard Tallman explained the principle, stating, “Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, ASPIRIN, CELLOPHANE, and THERMOS were once protectable as
arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods. But the public appropriated those marks and now primarily understands aspirin, cellophane, and thermos as generic names for those same goods.” Addressing the main argument of the plaintiffs, he said, “The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic. See 15 U.S.C. § 1064(3). Instead, a trademark only becomes generic when the ‘primary significance of the registered mark to the relevant public’ is as the name for a particular type of good or service irrespective of its source.” The test, as he put it is a matter of ascertaining the primary significance of the term in the minds of the consumer, whether the term conjures up a connection to the product rather than the producer. “If the relevant public primarily understands a mark as describing “who” a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing “what” the particular good or service is, then the mark has become generic.”
So how can brands keep their marks from falling victim to genericide? The first step is in picking the right mark. A mark that is merely descriptive of the product is not a good mark and is unlikely to be registered as a trademark because it lacks the requirement that a trademark be distinctive. The mark’s purpose is to identify the source of the product, not merely to describe the product. For this reason, arbitrary or fanciful marks with words and phrases that have no commonly understood connection to the product are the better option for companies developing a new brand. Think of marks like Apple and computers; Ivory and soap; or Elephant and detergent. Use words that have no ordinary meaning. Use a word from your native language. Just make sure that your mark is distinctive.
The second thing that trademark owners must do is police the market for trademark infringement. Be mindful of the use of the trademark, for instance by competitors in advertising their own product, and pursue all instances of infringement. Policing your trademark requires resources but in the words of Peterson J., “… what is worth copying is prima facie worth protecting.” (University of London Press v University Tutorial Press 2 Ch 601).