If Your Trademark Becomes Too Popular You May Lose Your Right to It

photo-generic-trademark-300x188A trademark concerns a product or service. If you register one it may eventually be used by the public in a way that transcends your product or service and applies to a wide range of products or services. Have you ever used a “Xerox machine” that was a copier not made by Xerox? If your mark becomes generic your right to it can be challenged, which happened to Google.

In 2012 Chris Gillespie acquired 763 internet domain names that contained the word “google” in them. In these names were words identifying a brand, person, or product such as “googledisney.com.” Google, Inc. objected to these registrations and filed a complaint with the National Arbitration Forum (NAF) which has authority to decide certain domain name disputes.

Google argued the registrations violated the Uniform Domain Name Dispute Resolution Policy and constitutes domain name infringement, or “cybersquatting.” Google argued the domain names are confusingly similar to its GOOGLE trademark and were registered in bad faith. The NAF agreed and the domain names were transferred to Google. In response David Elliott filed, and Gillespie later joined, a federal lawsuit in the Arizona District Court.

Elliott sought cancellation of the GOOGLE trademark under the Lanham Act. The law set up the trademark registration system and allows for the cancellation of a registered trademark if it’s primarily understood as a “generic name for the goods or services, or a portion thereof, for which it is registered.” Elliott argued the word “google” is “primarily understood as ‘a generic term universally used to describe the act of internet searching.’”

Google responded that Elliott didn’t have enough evidence to support a finding that the relevant public primarily understands the word “google” as a generic name for internet search engines. The court agreed and dismissed the case. Elliott appealed but the U.S. Court of Appeals for the Ninth Circuit agreed with the lower court in June.

The court stated that at one extreme of the trademark spectrum there are generic terms which are common, descriptive names which identify the type of good of which a particular product or service is a part of a larger category. Generic terms can’t be trademarked because they don’t identify the source of a product or service.

On the other end of the spectrum are “extreme, arbitrary or fanciful marks” which use words and phrases with no commonly understood connection to the product. They’re entitled to protection because they serve to identify a particular source of a product or service.

Over time if the product or service is successful enough, the trademark holder may become a victim of “genericide” when the public uses a trademark as a generic name for particular types of goods or services. The court cited “aspirin” and “Thermos” as marks that became generic.

The court stated this can be considered as the “who-are-you/what-are-you” test. If the relevant part of the public primarily understands a mark as describing “who” a particular good or service is, or where it comes from, the mark is valid. If the relevant public primarily understands a mark as describing “what” the particular good or service is, then the mark has become generic. Using the Google mark as verb (the act of performing an internet search), as Elliott claimed, doesn’t make it generic.

If you have any questions about trademarks, one of your trademarks has been challenged or you’re thinking about challenging a trademark filed by another, contact our office so we can talk about the marks, how the law may apply and what you can do to protect your legal rights.