Wednesday, May 31, 2017

Can “Google” Become So Popular That It Will Become Generic?


By  
Jack Russo* and Umeet Sajjan** 
Computerlaw Group LLP  

Introduction 

Can commercially important trademarks enter the public domain?  Yes, they can; genericness or "genericide," results when the public appropriates a trademark and uses it as a common (generic) name for certain common goods or services regardless of source.  One set of domain name owners have commenced litigation seeking a finding of “genericness” of “Google” but so far their efforts have been rejected by the Federal Courts. 

In Elliott v. Google (decided last week by the Ninth Circuit Court of Appeal), Plaintiffs who owned various "google"-related domain names petitioned for cancellation of the GOOGLE trademark claiming genericness under the Lanham Act, 15 U.S.C. 1064(3). The Ninth Circuit affirmed summary judgment in favor of Google, Inc.; the Court held that use of a mark as a verb does automatically constitute generic use; the key question is whether the primary significance of the word mark "google" to the relevant public is as (a) generic name for internet search engines or (b) as a mark for the Google search engine in particular. In this case, the evidence submitted did not support a finding of genericide. The case and its associated rulings (summarized below) is important for owners of all valuable trademarks who wish to assure broad federal protection. 
 
  1. Genericide Claims Must Relate to Goods or Services Registered. 

When trademarks are registered, they must be related to goods or services. This allows consumers to associate marks with the source of the goods or services, embodying a certain level of quality and encompassing the good will and advertising investment of the source of the goods or services. Accordingly, under the Lanham Act, petitions for the cancellation of trademark must link evidence of trademark genericness to the goods or services that the trademark is registered for. In other words, the trademark must be generally perceived by the public as a generic mark for the goods or services that the trademark or service mark is registered for. 
*Copyright 2017 by Computerlaw Group LLP (www.computerlaw.com) 

 Here, Plaintiffs argued that “google” had become a generic name for “the act of searching the internet,” asserting that the GOOGLE trademark had become generic. The Ninth Circuit, however, referred to the text of the Lanham Act, only permitting petitions of cancellation when a trademark becomes the generic name for the goods or services . . . for which it is registered.” 15 U.S.C. § 1064(3). Accordingly, the Court reasoned that though the Plaintiffs alleged that “google” had become a generic name for the act of searching the internet, the Plaintiffs had failed to assert that “google” had become a generic name for the goods and services it is registered for–internet search engines. The Court therefore found that Plaintiffs failed to meet the Lanham Act’s requirements for trademark cancellation 

  1. Verb Use Alone Does Not Automatically Constitute Genericide. 

Trademarks parallel the linguistic and syntactical function of adjectives; trademarks signal to consumers, describing the goods or services they are registered forHowever, is it always necessary for marks to be adjectives to be descriptive and source-identifying?  Or, is a symbol used as both a noun or verb still a protectable trademark?  

Plaintiffs argued that the use of “google” as a verb, rendered the GOOGLE trademark generic.  But does verb use automatically constituted generic use? Plaintiffs drew from the functional similarities between adjectives and trademarks, concluding that protectable marks must be adjectives to carry out the descriptive and source-identifying function necessary of trademarks. Thus, they reasoned that because the public had commonly used “google” as a verb (e.g., “let’s google that”) rather than an adjective (“let’s do an Internet-based search using the GOOGLE search engine”), the GOOGLE trademark had lost its descriptive and source-identifying function, rendering the mark unprotectable.  This is similar to genericide claimed against “Aspirin” and “Thermos” and a host of other popular terms. 

The Court rejected this argument, pointing to Congress’s amendment of the Lanham Act to state that trademarks “can serve a dual function–that of [naming] a product while at the same time indicating its source.” S. Rep. No. 98-627, at 5 (1984). The Court found that Congress recognized that trademarks may be source-identifying nouns and that some verbs may be source-identifying as “discriminate verbs” whereas other verbs may be “indiscriminate verbs.” Thus, the Court found that like adjectives, verbs could be source-identifying, concluding that the district court did not err in rejecting trademark verb use as automatically constituting genericide. 

  1. Important Lessons for Trademark and Service Mark Owners. 

Trademarks are fragile; they must be policed and protected even beyond careful selection and registration.  All marks – even very valuable ones such as “GOOGLE” -- can become victim to genericide. The Ninth Circuit’s ruling helps mark owners generally but it also provides at least three lessons: first, policing of marks remains important (so policing of conflicting domain names is important); second, marks should not be promoted generally or indiscriminately as verbs; and third, when marks are used as verbs that usage should be done as source-identifying (discriminate) verbs that grow goodwill and not the generic (indiscriminate) functions of the associated goods/services.  Trademarks can strengthen (or weaken) over time and even be lost to genericide so the active policing and protection must continue systematically. 

* Jack Russo, Esq., Managing Partner/**Umeet Sajjan (www.computerlaw.com)