June 1, 2017
by Jerry Glover
Did you know that ASPIRIN and THERMOS were, at one time, federally registered trademarks? But today those words are used for, respectively, any headache remedy and any insulated container no matter who produces or manufacturers them. They no longer have a source-identifying function—the major role of trademarks—because the owners allowed the terms to become publicly associated with product not the manufacturer. The marks became generic; the lack of control by the mark’s owners led to what is known as genericide.
Take a more recent example: have you heard of the intra-office chat app called Slack? It allows office workers within one company to set up an informal system of chat that is not part of the company’s regular email system. According to a recent New York Magazine article, about 5 million people use Slack. This same article noted that people are already using the Slack mark as a verb (“What do you do at work? I Slack” or “Did they get that taken care of? Yeah, we Slacked it” or “Are you Busy? No just Slacking”). Could this lead to another case of genericide?
Or take XEROX. How many times have you said “I need to Xerox this” or something akin to that? The owner of the Xerox mark has taken out ads in magazines to remind people that Xerox is not a verb but a trademark for the company that makes photocopiers. The owner is trying to avoid genericide.
A recent case from the U.S. Court of Appeals for the Ninth Circuit had to decide whether GOOGLE was generic. Had Google committed genericide? Elliott v. Google, Inc., 2017 WL 2112311 (9th Cir. May 16, 2017). The plaintiff in this case registered 763 domain names each of which included the word “google” (e.g., “googledisney.com”, googlebarackobama.net”). When Google found out about these registrations, it filed a complaint with the National Arbitration Forum which has the authority to decide certain domain name disputes. Google argued that the domain names were confusingly similar to the GOOGLE trademark and were registered in bad faith. The Forum agreed and transferred all domain names to Google.
The plaintiff then petitioned the trial court to cancel the GOOGLE trademark because it had become the generic name for the goods or services for which the mark is registered. He claimed that “google” is “universally used [as a verb] to describe the act of internet searching” (e.g., “I googled this and here are the search results”). Google argued, however, that the plaintiff had failed to show that the relevant public believes “google” is a generic name for any and all internet search engines and that the public, in fact, uses “Google” to mean one and only type of search engine. The trial court agreed with Google and the plaintiff appealed.
The appeals court noted that genericide occurs when the public appropriates a trademark and uses it as a generic name for a particular type(s) of goods or services no matter where these goods/services come from. The court noted that a mark does not automatically become generic just because the public sometimes uses the mark as the name for a product rather than the source of the product adding that a mark 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/series irrespective of its source.” The court added that this method of determining whether a mark has become generic is often referred to as a “who-are-you/what-are-you” test. If the public understands a mark to describe a product and not the producer, it has become generic.
What of the plaintiff’s claim that the public’s use of GOGGLE as a verb means it’s generic? The court stated that a mark can serve a dual function—naming a product and at the same time indicating its source. The appellate court noted that a consumer can use “google” as a verb in an “indiscriminate sense” (with no particular search engine in mind) or that same consumer can use “google” as a verb in a discriminate sense with only the Google search engine in mind. The court also noted that the plaintiff had not introduced any evidence to show what members of the public were thinking when they used “google” or whether they had a particular source in mind.
Since the plaintiff could not show that there is no way to describe internet search engines without calling them googles the mark GOOGLE still retained its trademark significance.