Legal Terms in Real Life: Genericide (Or: The Death of Google)

This series explains legal terms in plain language and gives examples from everyday life.

Today’s Legal Word of the Day is “genericide,” from trademark law. Genericide has been in the news recently because of Arizona resident David Elliott’s lawsuit to cancel two of Google’s trademark registrations for the term “GOOGLE” (Reg. Nos. 2,806,075 and 2,884,502). Black’s Law Dictionary (8th Ed.) defines “genericide” as: “The loss or cancellation of a trademark that no longer distinguishes the owner’s product from others’ products.”

Trademarks are words, symbols, or other source indicators (even colors, sounds, or scents) that help a consumer distinguish the products or services of one company from those of another. When a consumer is in the store, he or she can choose to purchase toothpaste labeled Crest, Arm & Hammer, Colgate, or any of a number of other toothpaste brands. The name on the box helps the consumer distinguish one from another. Trademark law is, at its heart, a form of consumer protection, although businesses, not consumers, must spend their time, energy, and money on building up and protecting trademarks as source identifiers.

As you know from our previous Legal Word of the Day, distinctiveness, there is a continuum of trademark strength, from fanciful to generic. Trademarks can move along this continuum. A mark that starts out as descriptive can become distinctive through long use and/or an advertising blitz, so that consumers associate what would be a descriptive name exclusively with a single product. For example, the clothing store The Children’s Place has at least arguably acquired distinctiveness as to its THE CHILDREN’S PLACE trademark.

Conversely, trademarks can move in the opposite direction along this continuum. A mark that starts out as fanciful or arbitrary may become the generic term for a product if consumers begin to believe that the trademark is the name of the product. This is genericide. Examples of marks that have been killed through genericide include ASPIRIN and THERMOS. Examples of marks that have at one time or another become endangered include BAND-AID, VELCRO, and TEFLON.

Whether Mr. Elliott successfully has Google’s GOOGLE trademark canceled will depend on whether he can show that the term has become so ubiquitous as a word meaning “to search” that consumers no longer associate the term with any particular search engine. He has several examples showing that the mark is often used as a verb meaning “to conduct an internet search”; however, he may have to show that consumers use the word to signify searching on any search engine, not only on Google’s search engine. This may prove difficult for him; I was unable to locate serious examples of people referring to “googling on Bing,” though parodies do exist.

Genericide is a fairly ironic death for a trademark; it signals that a company has become so successful at making its mark so well-known that the general public can no longer distinguish the trademark from the product. Genericide is death by success.

How Do I Protect My Idea? Part II: Trademarks and Service Marks

Protect My Idea - Trademark

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: trademarks and service marks.

A trademark (for products) or a service mark (for services) is something that identifies the source of a product or service. A mark (meaning either a trademark or service mark) may be a word, design, color, scent, or sound. However, it cannot be useful (referred to in trademark lingo as “functional”) in referring to the product or service whose source it is identifying. This is to prevent someone from removing a term or other identifier essential to selling a good or service from the marketplace—for example, you could not register a cylindrical shape as a trademark (trade dress) for a wheel. It would prevent anyone else from competing with you.

Rights in a mark can be obtained merely by using the mark in association with the sale of goods and services—this gives you rights in the mark at common law. You need not do more than this; however, there are many limitations to common law use, not the least of which is that it can be difficult to prove that you have the rights you claim. To show that you have common-law ownership of a mark, it may be necessary to demonstrate advertising over time and to show that consumers associate your company with the mark through surveys in the relevant geographical area. It is much simpler to obtain a registered mark, which grants rights throughout the state of registration or, for federal registration, throughout the United States. Other benefits of federal registration include being allowed to use the ® symbol; having a legal presumption of ownership nationwide; having the exclusive right to use the mark on or in connection with the goods or services set forth in the registration throughout the U.S.; and having your trademark visible in the fully searchable PTO database of registered trademarks, which can often deter would-be infringers.

Marks do require some maintenance. Most importantly, a mark must be used consistently in connection with the product or service that you are selling. If your mark is protected only at common law, this is all that you must do. If your mark is registered in your state, it will need to be renewed periodically; you should consult your state’s registration authority (usually the Secretary of State). If your mark is federally registered with the PTO, a Statement of Use must be filed between the fifth and sixth year following registration, and the mark must be renewed every ten years. There are small fees associated with these actions.

The greatest benefit of having a trademark is that no one else can use your mark (or a confusingly similar mark) for the same or similar goods and services within the protected geographic area. If you have elected to protect your mark only by common law use, that geographic area is limited to the places where the mark is in use and widely enough recognized to be a source identifier. If you have registered your mark with your state, that geographic area is limited to the state of registration. If you have registered your mark federally with the PTO, that geographic area is throughout the U.S. It is also possible to register trademarks in other countries, many of which do not have any common-law use, so if you wish to use and protect a mark in a foreign country, you should speak with an attorney.

The greatest drawback to having a trademark is that if you do not search carefully enough before adopting it, you may find that someone else is already using it and you are an infringer. If you are infringing on someone else’s mark, you may be forced to change your mark and lose any goodwill you have built up in it.

Further Reading

Trademark section of the PTO website: