Genericide. While the word might conjure up images of shadowy plots and midnight coups or sounds like it might be thrown around casually on Game of Thrones, luckily genericide does not involving the death of any person. Unluckily, if you’re a trademark owner, it does involve the death of your trademark. Many people don’t realize that, much like video killed the radio star, popularity and ubiquity can kill a trademark. As my colleague Linda Norcross mentioned a little over a year ago (http://www.lrlaw.com/ipblog/blog.aspx?entry=322&fromSearch=true), a trademark owner must be ever on guard against the Looming Specter of Genericide (LSG, for short).
Trademarks, as you know, have to be distinctive in order to function as trademarks; that is, consumers have to understand that the trademark indicates the source, affiliation or sponsorship of a good or service. Trademark law treats marks differently depending on how distinctive they are. Arbitrary marks - plain English words that are unrelated to the goods or services that are offered under the marks, like APPLE for computers - and fanciful marks - neologisms, or as I like to call them, made up words, like STARBUCKS or VERIZON - are inherently distinctive and receive the most protection right out of the gate. Suggestive marks - which, amazingly, suggest something about the good or service, like GREYHOUND for bus services - are also inherently distinctive, but just barely. Descriptive marks - in earth-shattering news, they describe something about the good or service, like VISION WORKS for optometry services - are not distinctive; they have to acquire distinctiveness through use. And then, at the bottom of the list are generic marks, which aren’t really marks at all, but just the generic word for the good or service, like RESTAURANT for restaurants. Generic marks are unprotectable because, well, you can’t just bogart the word “restaurant.”
While your mark may start out inherently distinctive, it can, over time, slide down the slope and end up generic. You probably have used zippers, escalators and aspirin in your life, but did you know they used to be ZIPPER fasteners, ESCALATOR machines, and ASPIRIN medicine? These marks were all victims of genericide or the deterioration of a trademark into a common name for a class of goods or services.
Genericide is the central issue in a new lawsuit filed against Google, Inc. in late May in the District of Arizona. The plaintiff in the case, David Elliott, registered numerous domain names that incorporate the GOOGLE trademark, e.g. googlezodiac.com and googlealexandria.com. Google won a UDRP action against Elliott and got the domain names transferred to it. In his Arizona lawsuit, Elliott is seeking to cancel Google’s registrations for the GOOGLE mark, alleging that GOOGLE has become google, (def. to search the Internet ex. “I should google my name to find out how awesome the Internet thinks I am.”) Essentially, the argument is GOOGLE has become so well-known that people no longer see the mark as distinguishing the source of the service. When someone says “Just google it,” they aren’t exhorting you to use the GOOGLE search engine, they’re merely telling you to look for something on the Internet and they really don’t care if you’re using Google, Bing, Yahoo! or Ask. Therefore, GOOGLE has lost its source-identifying ability, or so the argument goes.
As several courts have articulated, in order to demonstrate that a mark has become generic, a plaintiff must show that “the primary significance of the mark to the relevant public is to identify the class of product or service to which the mark relates.” A plaintiff can point to evidence from purchaser testimony; consumer surveys; listings and dictionaries, trade journals, newspapers, and other publications; generic use of the term by competitors and other persons in the trade; the trademark owner’s own generic use; and generic use in the media. In his complaint, Elliott points to dictionaries (online, natch) and scholarly societies and journals that define “google” as a transitive verb that is synonymous with “search.” He also points to Google’s own Annual Report wherein Google acknowledges LSG (feel free to name your next band or WoW guild Looming Specter of Genericide; I won’t mind). He even brings up Google’s co-founder’s generic use of “google” from 1998. It appears that, at the very least, Elliott has laid out a solid foundation in his complaint. Discovery in this case could get really interesting as the parties start looking for evidence that GOOGLE is or is not generic. Interestingly, Elliott is only seeking to cancel two of Google’s GOOGLE registrations, the ones directly related to providing Internet search services. So, Google would still have other GOOGLE trademarks to work with.
LSG is the downside to having a great trademark and a popular product. While you want your mark on everyone’s lips, you don’t want them using those lips to turn your mark into a verb, adjective or the general word for every good or service in your class. LSG requires vigilance and attention to how your mark is being used, presented and represented in the marketplace, by you, your customers and third parties. As the saying goes, the best defense is a good offense (although defense wins championships), so work with your trademark attorney to develop a game plan to defeat LSG. Remember: Maius Opus Moveo. Die Luft der Freiheit weht. Non sibi, sed suis. (Feel free to google a translation to conduct a GOOGLE search for a translation.)
