GENERICIDE: Death of a Mark
Trademarks exist as a source indicator, representing the goodwill and the quality of a product or service to consumers. When a trademark becomes generic, a process called “genericide,” the mark stops representing a source, and instead becomes synonymous with the product or service itself.
When a mark becomes so ubiquitous that it is used in everyday language regardless of the actual source of the product or service (think KLEENEX vs. tissue,) then it risks genericide and must be carefully policed by its owner. Many people use “google” as shorthand for running an Internet search, the question is: does that mean “google” is now generic for Internet search services?
THE CASE: Elliot v. Google Inc., No. CV–12–1072-PHX-smm, 2014 WL 4470390 (D. Ariz. Sept. 11, 2014)
Unsurprisingly, Google has several trademark registrations that refer to its search engine services, two of which were challenged as generic in this litigation. Plaintiffs registered 763 domain names that combined the word “google” with another word, such as <googledisney.com.> After a decision was rendered in the UDRP proceeding that transferred the domain names to Google, Plaintiffs filed suit in the District of Arizona. Plaintiffs alleged that the GOOGLE mark is generic because it is commonly used as a verb to refer to searching something on the Internet. On summary judgment, the Court found no genuine issue of material fact concerning the GOOGLE mark; it is not generic regardless of being used as a verb.
DISCUSSION: Can a Verb Still Represent a Brand?
The Court opened its analysis by examining the purpose of trademarks and when they are subject to cancellation, focusing on the “primary-significance test.” Under that test, a mark is not generic when its primary significance “in the minds of the consuming public is not the product but the producer.”
The Court made short work of Plaintiffs’ argument, emphasizing that its premise was “flawed,” and showing a disdain for “grammatical formalism.” Specifying, “verb use of a trademark is not fundamentally incapable of identifying a producer or denoting source,” the Court then compared and contrasted discriminate with indiscriminate use of a mark as a verb. In short, the discriminate verb use of a mark means using the brand product to perform the action, whereas the indiscriminate verb use of a mark means doing the action, although not necessarily with its intended brand (e.g., googling something using GOOGLE vs. googling something using BING).
The Court reasoned that the verb “to google” functions as a synecdoche, which is a figure of speech where one part of a word is made to represent the whole of its subject, or vice versa (such as “wheels” for car.) The Court emphasized that merely because a mark may also be associated with a general action, so long as its “principal significance” is still an indication of origin then the mark is not generic.
Subsequently, the Court examined the primary significance of GOOGLE to the consuming public, emphasizing the burden on Plaintiffs to prove genericide due to the benefits of Google’s federal registrations. Because Plaintiffs (1) were unable to cite a single dictionary definition that did not include the trademark significance of GOOGLE; (2) had no evidence of Google misusing or failing to police its mark; (3) had no evidence of competitors using GOOGLE as a non-trademark; and (4) the lack of reliability of Plaintiffs’ experts, one of which stated in his deposition that his survey “tested neither the primary significance of the term Google to consumers nor whether the term was generic with respect to search engine hardware and software,” the Court soundly reaffirmed that GOOGLE is a valid trademark for use in connection with hardware and software for conducting internet searches.