Updated: Mar 13, 2020
One a mark is declared to be a generic name, the designation enters the "linguistic commons" is free for all to use. It loses all of its trademark power.
The Lanham Act provides that if a registered mark becomes the generic name for the goods or services for which it is registered, a challenger can file a petition in court to have that registration cancelled. Thus, in practical terms, there is a very delicate balance between attempting to promote a brand while not stepping on the Lanham Act’s toes, to avoid triggering a genericness claim.
The somewhat recent ninth circuit’s decision in re. “Elliott vs. Google, Inc.” 860 F.3d 1151 (9th Cir. 2017), cert. denied, 1385 Ct. 362 (2017) upheld a summary judgement finding that Google’s trademark is not generic. By doing so, the court in Elliott lessened the fear of possible loss of the trademark power by finding that indiscriminate use of a mark alone does not support genericide.
As a brief background, Chris Gillespie had registered 763 domain names, which included the word “google” so Google filed a complaint with the National Arbitration Forum arguing that these registrations constituted trademark infringement. David Elliott, joined by Gillespie, requested to cancel Google’s trademarks claiming that Google’s mark “google” had become the generic term for searching in the internet.
Google claimed that verb use did not automatically trigger genericide and that plaintiffs had failed to bring any triable issue of fact. The district court granted summary judgment in favor of Google relying on a Teflon- type survey that showed 94% of participants identified “google” with a brand, not a “common name.” Such survey evidence is only not required if there is overwhelming evidence outside the surveys to prove genericness. The courts have approved two main models: (1) the Thermos survey and (2) the Teflon survey. The Thermos survey is the less used, it asks respondents how they would ask for the product at issue. The Teflon survey, used in this case, consists of three steps: (1) a survey maker explains the basic definitions of terms like “common generic name” and “brand name.” (2) a survey maker conducts a test and everyone who fails is eliminated, (3) the survey maker will ask the participants to classify terms as brands or common names.
In a world where the brand is now the product, consumers have developed such loyalty to companies and brands. Survey evidence help the court reveal what consumers think about different products, marks, and companies.
The ninth Circuit affirmed the district court’s decision. With the Court ruling at the summary judgment stage, the Elliott decision essentially turns on the holding that verb use does not automatically constitute genericness. Verb usage of the term “google,” according to the Ninth Circuit, did not even bring up the question of material fact. ELLIOTT MADE CLEAR THAT VERBIFICATION OF A BRAND IS ACCEPTABLE WITHIN THE FRAMEWORK OF THE GENERICIDE DOCTRINE.
While the court in Elliott attempted to follow precedent, they failed to discuss the contextual differences between a brand like Google and other companies that are focused on a product rather than a brand.
Google is a failed story of Genericide, what will happen with the genericide doctrine in general still remains to be seen.