Don’t Let Your Trademark Become Generic
Posted on Oct 25, 2017 in Articles
This article originally appeared in The Legal Intelligencer on October 24, 2017.
A music video went viral this month, but it’s doubtful you know any of its musicians. The tune is quite catchy, and the performance is not only professional, but very enjoyable. What is the theme of the song? Coming of age? A broken heart? No. It’s a music video about Velcro Brand Fasteners and the VELCRO trademark.
Velcro Companies is on a mission to prevent the loss of their trademark VELCRO. They have certainly come up with a clever way to try to achieve their goal. The video features actors and real lawyers who sing about the proper way to use the trademark VELCRO, and how the trademark will be lost if improper use goes too far.
Trademarks identify the source of their respective products (service marks do so for services) as well as the quality of those products. Consumers, when deciding between the purchase of two similar products, will often make their purchase based on which product is perceived to have the higher quality. Trademarks are highly valuable assets because of how often they affect buying decisions.
So, if a company believes that their trademark rights may somehow become lost, and if the trademark is valuable (meaning, for example, that the trademark is associated with a very profitable product), then significant steps should be taken to try to prevent the loss.
A VELCRO fastener uses a technology called “hook and loop.” One side of the fastener consists of miniature hooks that latch onto miniature loops on the other side of the fastener. Velcro Companies wants to avoid having consumers use the VELCRO mark with every hook and loop fastener, regardless of manufacturer. When a trademark is no longer associated with one individual product, and instead identifies many similar products (regardless of their source or quality) the trademark has become generic (or has been “genericized”) and rights in the mark are lost. Velcro Companies wants to avoid having that happen to their VELCRO mark.
The trademark law annals are filled with examples of trademarks that have become genericized, with a resulting loss of trademark rights. In Bayer v. United Drug, 272 F. 505 (S.D.N.Y. 1921), Judge Learned Hand concluded that Bayer’s trademark “aspirin” had become generic. Bayer’s trademark “heroin” reached the same fate. The mark “escalator” was originally owned by the Otis Elevator Co. Cellophane was a registered trademark of Dupont before rights in the mark were lost. Other examples include kerosene, Laundromat, linoleum, thermos and trampoline.
What can be done if a trademark is at risk of becoming generic? Many companies resort to advertising campaigns, although not quite as flashy as Velcro Companies’, to try to save their rights. One approach has been to teach the buying public to use each trademark correctly, not as a noun, but as an adjective. Xerox Corp., for example, ran numerous ads in the 1990s: “You can’t Xerox a Xerox on a Xerox … But we don’t mind at all if you copy a copy on a Xerox® copier.” The Clorox Co. ran an ad, stating “When you add our bleach product to your laundry, you’re adding CLOROX® bleach.” Another approach has been to request that a trademark be used correctly. Rollerblade, Inc. ran the following ad: “Incorrect[:] eating raw poultry, marrying your sibling, ‘ROLLERBLADING’.” A Frigidaire Corp. ad stated “The word Frigidaire always ends with a capital ‘R’”—as in the registered trademark ® symbol. In yet other cases, the goal was simply to inform the public of a company’s trademark ownership. When the Jeep mark was owned by Chrysler, company guidelines required that a “trademark ownership statement must appear in legible text on every communication … namely, ‘Jeep is a registered trademark of Chrysler Group LLC’.” Other ads informing of trademark ownership have been published by W.L. Gore (for the mark GORE-TEX) and the McIlhenny Co. (for the mark Tabasco).
Velcro Companies is concerned that if they are in court over the VELCRO trademark, their opponent will argue that the trademark has become generic, and that the trademark rights are unenforceable. Their concern is timely. Earlier this month, the U.S. Supreme Court denied a petition to reconsider a lower court decision regarding the mark Google. The petition had been filed after the U.S. Court of Appeals for the Ninth Circuit ruled that the Google mark had not become generic (Elliot v. Google, 15-15809 (9th Cir. 2017)). Plaintiff Chris Gillespie had purchased 763 website domain names that included the mark Google. Examples include googledisney.com, googlebarackobama.net and googlenewtvs.com. Google Inc. (owner of the mark Google) then filed a complaint with the National Arbitration Forum (NAF) for domain name infringement (cybersquatting). NAF agreed with Google Inc., and transferred all 763 of Gillespie’s domain names to Google Inc. Plaintiff David Elliot (who was later joined by Gillespie) then filed a petition for cancellation of the Google trademark under the Lanham Act, which provides for trademark cancellation “at any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered …” In particular, the plaintiff argued that the public uses the mark Google as a verb, as in “I googled it,” and use of a mark as a verb renders the mark generic.
The Ninth Circuit affirmed a lower court decision that the Google mark had not become generic on several bases. First the court noted that a “a claim of genericide or genericness must be made with regard to a particular type of good or service.” The plaintiff had argued, however, that “google” had become a generic name for “the act” of searching the internet, and not the goods or services actually associated with the registered trademark. (A search of the Google mark at the U.S. Patent and Trademark Office website describes the associated goods as being “computer hardware; computer software for creating indexes of information, indexes of websites and indexes of other information resources”). Second, the court rejected the argument that verb use “automatically constitutes generic use.” While adjective use is an important tool to prevent a trademark from becoming generic, it is not a requirement. Congressional commentary on the Lanham Act is on point: “if a product is unique, it is more likely that the trademark adopted and used to identify that product will be used as if it were the identifying name of that product [i.e. as a noun]. But this is not conclusive of whether the mark is generic.”
And while the plaintiff submitted large quantities of evidence to support its contention, the court wrote that the evidence was not directed to the good or service associated with the Google mark.
In summary, the Ninth Circuit described the test for a trademark becoming generic as a “who-are-you/what-are-you” test, namely: “If the relevant public primarily understands a mark as describing ‘who’ a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing ‘what’ the particular good or service is, then the mark has become generic. In sum, we ask whether ‘the primary significance of the term in the minds of the consuming public is [now] the product [and not] the producer’” (citing Kellogg v. Nat’ional Biscuit, 305 U.S. 111 (1938).” Elliot, the plaintiff, had failed to prove that the relevant public did not associate the GOOGLE mark with Google’s search engine. Google won the case.
The Elliot v. Google case is good news for trademark owners who are afraid that their marks may become generic, by holding that verb use of a mark does not necessarily mean that the mark has become generic. But, trademark owners still need to protect their marks to maintain their trademark rights.
In the meantime, the Velcro Companies’ music video continues to discourage improper trademark use: “If you keep doing it, our trademark’s going away. We’re begging you …”
– By Lawrence E. Ashery