Trade mark lawyers will tell you that you should never use your trade mark as a verb, or allow others to do so. Why? Because, it’s the first step on a very slippery slope, one that could lead to your trade mark becoming generic. And when your trade mark becomes generic – in other words a generally-accepted, descriptive term for the product you sell, it ceases to function as a trade mark. With the result that you can no longer enforce your trade mark rights, and even lose your trade mark registrations.
This makes the recent US decision of Elliot v Google (which held that Google has not become a generic word, and that Google’s registrations for the trade mark Google are not invalid) very interesting because it does suggest that the courts may, in certain circumstances, tolerate a certain amount of verb usage of a trade mark. In this case the court agreed that the word ‘google’ is used as a verb, in other words that people will often say that they will google something, when they actually mean that they will search it on the internet, making use of the search engine of their choice. Notwithstanding this, the court felt that this verb usage has not had the effect that Google no longer operates as a trade mark or source designator for one specific search engine. In other words, the word Google, although meaning ‘to search on the internet’, is also the name or trade mark of the search engine that most of us use.
The court said this: ‘It is contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark – cultivated by diligent marketing, enforcement and quality control – has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs. As one scholar has stated, “top-of-mind use of a trademark in its verb form, far from indicating the mark’s generic status, may well indicate the enduring fame of the brand”’.
The court does seem to have been influenced by the fact that the two individuals who sued Google (and who had been aggrieved by the fact that Google had successfully sought a transfer of certain ‘google’ domain name registrations that they had obtained) did not put up much of a case. In particular, it seems that the pair’s lawyer submitted survey evidence that the court found was completely unscientific. Google’s lawyers, on the other hand, submitted a survey that showed that 94% of consumers regard Google as a brand name, and only 5% see it as a common word (not sure about the remaining 1%, perhaps there are actually people on this planet who have never heard of Google!).
The company was, no doubt, immensely relieved when the court handed down its judgment. After all, Google is one of the most valuable trade marks in the world: Forbes, which describes the trade mark as ‘Google’s single most valuable asset,’ says its value is in the order of US$113 billion. But the company can take considerable credit for the finding. That’s because it’s well known that Google is very trade mark-aware, and has always been conscious of the so-called ‘genericide’ problem that can face companies, particularly those that are either ground-breaking or dominant and who, as the quotation from the judgement suggests, can be perversely punished for their success. Google has, by all accounts, taken steps to avoid its trade mark becoming generic.
So just what steps can you, the trade mark owner, take to avoid your trade mark becoming generic? The most obvious one is to make sure that you yourself use the trade mark correctly - as an adjective, not in the plural form, and not as a verb. As for third party usage, that’s more difficult, because incorrect descriptive usage generally isn’t an actionable infringement. So you have to use other means, like persuasion: if the media use your trade mark in a generic way, ask them to stop; if dictionaries list your trade mark, ask them not too (Google has apparently been very big on this). And then there’s education - a number of companies make a point of telling people (perhaps in ads) that their trade mark is just that, and not a word that should be used descriptively.
Not every company gets this, however. As Forbes says, ‘many Internet entrepreneurs dream of a day when their service’s trademark becomes generic... after all, that means they’ve reached the big time.’ They’re making a mistake. They should heed the lesson of a famous trade mark case that dealt with the term ‘oven chips', initially the trade mark of a ground-breaking product, but soon a generic term when it became the description of choice for the competition.
History is, of course, littered with examples of trade marks that have, perhaps because they weren't looked after, become generic words that belong to everyone and no-one – thermos, escalator, cellophane, aspirin (still a trade mark in some countries). A more modern example is app. There are certainly trade marks out there that are borderline – Forbes says that ‘Xerox and Kleenex are two trademarks that are probably still protected but have been teetering on the cusp of genericism for years.’ Which might just explain why the makers of Kleenex use expressions like ‘Kleenex brand tissues’ in order to emphasize that Kleenex is the name of a brand not the name of a product.
Notwithstanding the Google judgment, our advice remains the same: make sure that you use your trade mark correctly, and do what you can to make sure others do too.