Words in Action - Trademarks as Verbs

This writer, for one, will fully admit to often using very well-known brands as the descriptive term for all such items, for example calling all plasters Band-Aids and all cotton-tipped plastic cleaning things (a technical term, undoubtedly) as Q-Tips, regardless of all of those terms having been, or still being, registered trademarks. While my misstep in potentially diluting these valuable brands in using them in this way can be seen as a small error, or even wholly unnoticeable in the grand scheme of things, it still brings light to an issue all trademark holders face; the potential of losing your mark to genericization. While this topic has been discussed on this very blog before quite extensively, the use of trademarks as verbs specifically has been left a bit in the dark, yet is illustrative of a newer problem technology companies especially will face. Who hasn't said they will 'Google' something, or if they will 'Facebook' their aunt Mary; a grave threat the holders of those particular marks will lose sleep over. One such giant facing a recent challenge to its widely recognized trademark is Google, which posed an interesting question to all trademark holders.

The case in question is Elliot v Google Inc, where the claimant, David Elliot, registered over 760 different domain names combining the word 'Google' and another brand or a famous person, for example googledisney.com, or with generic terms such as googletvnews.com. As you might have guessed, Google has trademarked the term 'Google' in a number of variants; two of which were at issue in the case: US trademark 2884502 and 2806075. These two marks encompass the word 'Google' in several categories, such as web indexes and computer software - promptly leading to Google pursuing the domain names through the Uniform Domain-Name Dispute-Resolution Process (UDRP). In his defense Mr. Elliot asserted that the term 'Google' had become generic and could therefore be used by him (and others) without infringing on Google's marks. The domain names Mr. Elliot had registered were transferred to Google in the UDRP, which prompted Mr. Elliot to pursue the matter further in the US District Court of Arizona.

What Mr. Elliot's argument largely states, and what the court had to assess, was whether the term 'Google' had effectively become ubiquitous with the verb 'googling' - defined by the Oxford Dictionary as "[s]earch[ing] for information about (someone or something) on the Internet using the search engine Google" - rendering it generic rather than distinctive as to Google and/or Google's services. As trademarks need to specifically distinguish the origin of goods or services, becoming a generic verb can be the mark's end.

Stacy was unnerved after 'googling' herself

What the court had to determine was whether the mark's "...primary significance" was that of distinguishing the goods or services from other similar ones. The test was phrased well by Justice Brandeis in Kellogg v National Biscuit: "...the primary significance of the term in the minds of the consuming public is not the product but the producer". This is highly important, as if a product is named as the major brand (i.e. if you refer to all plasters as 'Band-Aids') in general terms, the mark loses its status as the seal of origin for that brand, or as stated by Justice O'Scannlain in Filipino Yellow Pages: "...if the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark".

Using a trademark as a verb does not automatically change the primary significance of that mark, and a mark, such as 'Google', can be used for both the designation of an origin for goods and services and as a term describing the searching of information via the search engine - noted by the court in the case. This synecdochian dual-functionality of a mark is wholly valid; however, should the perception of the public change drastically as to the meaning of the word, i.e. if most people would believe and/or use the term "to google" to mean using any search engine online to seek information, then the mark can be determined to be compromised, even with this accepted dual-functionality. This was phrased well by Justice McNamee (the name seems more than appropriate considering the case's subject matter): "It is thus contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark—cultivated by diligent marketing, enforcement, and quality control—has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs". Arguably this argument holds well, and this writer for one agrees wholeheartedly with the court's view, as the stripping of a mark's distinctive nature the moment it becomes even partially descriptive of a class of products or services would run contrary to the value given by trademarks to brands and their place in a given class.

In the end the action failed, as Mr. Elliot failed to demonstrate how the mark 'Google' had turned generic, as the public still strongly perceived it as part and parcel to the company, not just internet search engines or internet searching at large. The case does bring light an important issue, and often something that the general public will not think about; how our daily use of terminology, especially trademarks, can alter their value. Some examples include 'Xerox' (become a term for all photocopying) and 'Thermos' (used as a term for all heat-retaining drinks containers), which have become generic due to their use as the identifying term in a given class. Due to this the International Trademark Association has even issued guidelines on the proper use of trademarks, which most of us will find potentially excessive, yet is quite important. As can be seen, trademarks are a dangerous beast, especially when they become famous to the point of ubiquity; however for most this risk is quite worth it.

Source: JDSupra

Retrospective - Genericization of Trademarks

The name of a product can often be an incredibly strong identifier of a certain type of goods. Think of Aspirin, Cellophane, Yo-Yo, Escalator or even Heroin, and you automatically associate them with a particular type of good as opposed to a particular brand of goods. This is called the genericization of a trademark; where the trademark has become so ubiquitous of a type of good it loses its distinctiveness towards a particular brand of goods.

A pillow you can sleep on AND eat

A case which illustrated the genericization of a trademark was the case of Kellogg Co v National Biscuit Company. The case dealt with the sale of a product many are even familiar with today called 'Shredded  Wheat' For the uninitiated, this product is a breakfast cereal consisting of pillow-shaped wheat shreds, which was made by both companies. The product was initially made by a company called the Natural Food Company (which underwent a name change to the Shredded Wheat Company later on) since the early 1900s, which was subsequently bought by National Biscuit Company in 1930. The Kellogg's Company had made their own variant of Shredded Wheat since the late 1920s, although they had a similar product produced before that time. The National Biscuit Company subsequently sued Kellogg's for unfair competition for the use of the name 'Shredded Wheat' due to them producing a similar product and using the same name for that product.

In the case there were two considerations that the Federal Court of Delware had to decide on; one relating to the patent of the manufacture of the products, and the aspect of the use of the name. For our consideration the latter part is of more interest, however the patent does affect this particular point to an extent.

In the Court's decision they saw that the National Biscuit Company had no exclusive right to use the term 'Shredded Wheat' in selling their product. According to the Court the term is merely a descriptive one of a pillow-shaped wheat cereal, and the public recognize the name as an identifier of such products, due to Kellogg's ability to make the product (as the patent for the manufacturing method had expired in late 1912). The product had been sold since the late 1890s under the name of 'Shredded Wheat', and the term had not been trademarked until it was attempted to be trademarked by the Natural Food Company in 1905 - which was subsequently refused.

What makes this case peculiar is the inclusion of the name 'Shredded Wheat' as part and parcel of the patent for its manufacture. As the patent for the product's manufacture had gone into the public domain upon its expiry, so had the term which had been used to identify products which were manufactured in that particular way. According to the Court:

"It equally follows from the cessation of the monopoly and the falling of the patented device into the domain of things public that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly... To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner of the patent or the manufacturer of the patented thing had retained the designated name which was essentially necessary to vest the public with the full enjoyment of that which had become theirs by the disappearance of the monopoly."

Eating breakfast can be complicated

In other words, the term 'Shredded Wheat' had become generic in the description of pillow-shaped wheat cereal products, and therefore could be used by anyone wishing to make and sell those products. Kellogg's had to merely distinguish its products from the plaintiffs so as to avoid any confusion, and through which a potential action in passing off. This was done through a distinctive look of the Kellogg's box, which did not resemble the one used by the National Biscuit Company, and the actual product differed both in size and appearance slightly from those made by the plaintiff.

The genericization of trademarks is a complex analysis of both the goodwill of the product in question (its reputation and imagine in the mind of the consumer) and other potential factors. It can be argued that even though the Court saw that the patent contained the use of the term 'Shredded Wheat', this would not be the case today. Arguably the use of the same term by Kellogg's could be an act of passing off the product, regardless of the manufacturing methods employed, as the plaintiff had been selling the product for over 20 years prior to Kellogg's adopting the name for its product. The plaintiff's inability to register the trademark would go against their action; however the motives of Kellogg's in the use of the name can be questioned.