A generic trademark is never entitled to trademark protection if it the generic name of goods or services on or in connection with which it has been used. A generic term can never become a trademark.
“[N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name.”
See Abercrombie & Fitch, 537 F.2d at 9
What is a Generic Trademark?
A trademark becomes a generic trademark by genericide. This happens when a trademark becomes the name of the thing instead of an indicator of the source of a thing. For example, is Velcro a generic trademark? For example, is Velcro a generic trademark? Probably, because when someone asks you to buy them some Velcro, you ask them what size and length. Velcro has become the name of a thing. So the Velcro company now wants you to call their fasteners Velcro hook and loop fasteners.
Velcro was a patented invention and only the Velcro company could make it. And they labeled their fasteners as just Velcro, not Velcro Fasteners or Velcro Hook and Loop Fasteners. It is now more than 40 years after their patent expired, and the Velcro company is worried that their brand has become a generic trademark. So they sing the following song.
We’re a company that’s so successful that everywhere you go, you see this scratchy, hairy fastener and you say, “Hey! That’s velcro!”
But even though we invented this stuff, our patent lapsed 40 years ago. Now no matter who else makes it, you still want to call it ‘velcro.’
You think it’s awesome for us, we’re famous but we’re lawyers and it’s causing us grief.
‘Cause there are trademark laws being broken, it’s all here in this short legal brief. And we know that this is confusing because Velcro Brand is who we are.
But if you call it call ‘velcro’… we’re gonna lose that circled ‘R’.
This is called ‘hook and loop,’ This part’s a hook, this part’s a loop.
You call it ‘velcro,’ but we’re begging you, this is (bleep)-ing ‘hook and loop.’
We know this seems ridiculous, this is a first-world situation. And we made half of a billion last year, I went to Turks on my last vacation.
And we’re asking you not to say a name, we took 60 plus years to build.
But if you keep calling these ‘velcro’ shoes, our trademark will get killed.
We aren’t just doing this for us, we’re doing it for all the successful brands that got so popular people started using the brand names the wrong way.
So, please remember…
If you need something to clean up your socks, do it with bleach and not with (bleep.)
If you have blood from a boo-boo you made, this is a bandage and not a (bleep.)
If you’re exercising with someone you’re dating, it’s inline skating and not (bleep.)
I know that bleeped stuff is more fun to say, but if you keep doing it our trademarks go away.
This is called ‘hook and loop,’ this part’s a hook, this part’s a loop.
You call it ‘velcro’ but we’re begging you, this is (bleep)-ing ‘hook and loop.’
The Velcro company is trying to stop the genericide of their Velcro brand.
What is Genericide?
Genericide is 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 a generic word and may be used by anyone to sell their goods and services. A genericized trademark is a trademark that is no longer valid and is now available for everyone to use. Under trademark law, 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.
Lanham Act Section 14(c) provides for cancellation of a registered mark if at any time it becomes the common descriptive name of article or substance, so that proof of secondary meaning, which allows registration of some “merely descriptive” marks, cannot transform a generic term into a subject for a trademark. See Abercrombie & Fitch, 537 F.2d 4
Section 14(c) of the Lanham Act is now section 14(3) of the Lanham Act.
(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
Benefits of Trademark Registration
Seminal Cases on Generic Trademarks:
The seminal cases on generic trademarks make the following points of law:
Thermos Is a Generic Trademark
Thermos for an insulated beverage container. In order to become generic, the principal significance of the word must be its indication of the nature or class of an article, rather than an indication of its origin.” King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577, 579 (2d Cir.1963)
Aspirin Is a generic Trademark
Aspirin is known as a headache medicine. Judge Learned Hand stated the sole issue in Aspirin to be: “What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more.” Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921), 272 F. at 509
All of these generic words were once exclusive trademarks: Cellophane for “transparent cellulose film.”
Murphy Bed for a fold-up wall bed.
Yo-Yo for the toy. Escalator for the mechanical stairs. Google is not on the above list because the 9th Circ. ruled that ‘Google’ Is Not Generic Trademark
Between February 29, 2012, and March 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word “google.” Each of these domain names paired the word “google” with some other term identifying a specific brand, person, or product— for example, “googledisney.com,” “googlebarackobama.net,” and “googlenewtvs.com.” The Ninth Circuit ruled on May 17, 2017, that “Google” has not become a generic trademark like “aspirin” or “thermos,” rejecting a case claiming the tech giant had lost control of the name because of widespread use of “google” as a verb. The Ninth Circuit panel of judges affirmed the district court’s summary judgment in favor of Google, Inc., in an action under the Lanham Act, seeking cancellation of the GOOGLE trademark on the ground that it is generic. The panel held that a claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. The district court thus correctly focused on internet search engines rather than the “act” of searching the internet. The panel also held that verb use of the word “google” to mean “search the internet,” as opposed to adjective use, did not automatically constitute generic use. The panel affirmed the district court’s conclusion that the plaintiffs’ evidence was insufficient to establish that the primary significance of the word “google” to the relevant public was as a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular. The Supreme Court rejected Elliott and Gillespie’s petition to review a asserting that the term “google” has become too generic and therefore unqualified for trademark protection on Oct 23, 2017. https://arstechnica.com/tech-policy/2017/10/supreme-court-wont-nullify-google-trademark-in-genericide-challenge/
Google’ TM So Common It’s Become Generic, 9th Circ. Told
Law360, San Francisco (March 17, 2017, 7:31 PM EDT) — Two men who’ve bought hundreds of domains containing the word “google” asked the Ninth Circuit at a hearing Friday to revive their case arguing “google” is so commonly used that it’s become a generic term meaning “to search the internet,” and not a valid trademark for the popular search engine. Richard Michael Wirtz of Wirtz Law APC — attorney for plaintiffs David Elliott and Chris Gillespie — said the suit was improperly dismissed by U.S. District Judge Stephen McNamee at the summary judgment stage, in spite of a plethora of evidence — including consumer surveys, the testimony of two linguists and dictionary definitions — that suggested the word has become generic. All this evidence presented a triable issue of fact that needed to go before a jury, he said. Judge Richard Tallman didn’t seem so sure. He said he couldn’t understand why the consuming public couldn’t use the term “google” colloquially in a general sense, while understanding it as a trademark referring to a specific company as well, just as “coke” can mean Coca-Cola but can also refer to similar sodas, like Pepsi. “If the consumer understands there is a distinction between the two, why does that establish genericization?” the judge asked. “It just means that we’ve developed a shorthand term, which everyone knows comes from the preeminent search engine on the internet.” “That’s exactly what happens in genericide,” Wirtz answered. “Look at the marks that have been made generic. People use ‘escalator’ to mean a moving staircase, and the court said, ‘Sorry, I know you spent a lot of time developing this and marketing it, but you’ve done so well that everyone knows a moving staircase is an escalator we’re going to adopt that.’ Yo-yo, aspirin, heroin: these are all generic forms of a trademark that the owners were not happy about.” But Google attorney Angela Dunning of Cooley LLP told the judges that the plaintiffs’ evidence was questionable because they hadn’t proved that “google” had become a generic term that referred to all search engines, or that it was common parlance to call any search engine “a google.” She also said their expert linguists admitted “Google” is a trademark, and the dictionaries had secondary definitions that referred to the company. Their surveys didn’t follow standard protocol with clarifying follow-up questions, and they didn’t get to the issue central in the case, she said. “It was plaintiffs’ burden in this case, where we have a registered mark, to show that the Google mark had become generic,” Cooley said. “The fact that many people may use a mark casually in conversation as a verb, an adjective or some other part of speech doesn’t answer the question of whether its primary significance is as a trademark or not. That question goes to what people understand, the mind of the consumer. Their evidence is not sufficient. It was plaintiffs’ burden, and they didn’t meet it.” Judges Paul J. Watford, Richard C. Tallman and Louis Guirola Jr. sat on the panel. The plaintiffs are represented by Thomas Daniel Foster of TD Foster and Richard Michael Wirtz of Wirtz Law APC. Google is represented by Angela Dunning of Cooley LLP and Robert W. Shely of Bryan Cave LLP. The case is David Elliott et al. v. Google, case number 15-15809, in the U.S. Court of Appeals for the Ninth Circuit. –Editing by Orlando Lorenzo.
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, while it is technically possible to revive a brand after genericide, this process can take years and a significant amount of money. And even so, it is not guaranteed to work.
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.