Tag Archives: Trademark

Google & Trademark Genericide – Be Sure to Ask the Right Question

Genericide.  

It sounds like something you might put on your lawn to kill weeds. But in the world of brands and marketing, genericide is a killer of trademarks. It is what happens when a trademark becomes the common (generic) word for a product or service itself and is no longer protectable under trademark law.

Countless articles tell the stories of how trademarks lost their ability to distinguish the source of goods because they became generic. Examples include CELLOPHANE, LANOLIN, ESCALATOR, THERMOS, and ASPIRIN. See INTA’s Practical Tips on Avoiding Genericide.  

Genericide is one reason companies police how others use their trademarks. It is also a reason that companies create branding and trademark usage guidelines, like these for Intel, Apple, and Symantec. See also, A Guide to Proper Trademark Use.

Some guidelines, like those of Symantec, go beyond what to do, and explain why:

Proper usage aids consumers who depend upon Symantec’s goods and services and helps prevent Symantec Trademarks from losing their distinctiveness and becoming generic.

They may even explain what not to do:

Trademarks are adjectives and should be followed by the generic term they modify, such as “software” or “product”. Never use a trademark as a noun, a verb, or in the possessive form.

With all of this focus on how marks lose their distinctiveness by becoming generic, you may be thinking:

What is the deal with GOOGLE?

People seldom say, “Try searching for [whatever] using the Google search engine.” People instinctively shorten things and say, “Try googling it.” But shouldn’t that lead to Google becoming generic and incapable of serving as a trademark?

Not necessarily, said the Ninth Circuit Court of Appeal in Elliott v. Google, Inc., No. 15-15809, 2017 U.S. App. LEXIS 8583 (9th Cir. May 16, 2017). There is more to it. You have to ask the right question, and that is the TAKE-AWAY at the end of this article.

Initially, explained the court, the mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic. Rather, a trademark only becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of good or service irrespective of its source.

Courts make that determination by applying the “who-are-you/what-are-you” test:

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.”

In Elliott v. Google, seeking show that Google had become generic, Elliott focused on how google often is used as a verb. [Well-known dictionaries define google as a verb.] The Ninth Circuit court, however, found Elliott’s claim to be flawed for two reasons: (1) a claim of genericide must always relate to a particular type of good or service; and (2) use as a verb does not automatically constitute generic use.

Genericide Must Relate to a Particular Type of Good or Service

Relation to a particular type of good or service, the court said, is infused throughout several sections of the Lanham Act (federal trademark law). A mark can be canceled if it “becomes the generic name for the goods or services . . . for which it is registered.” “If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed.” The relevant question under the primary significance test is “whether the registered mark has become the generic name of [certain] goods or services.”  15 U.S.C. § 1064(3).

The court then added that such a relation requirement is necessary to maintain the viability of arbitrary marks as a protectable trademark category. In other words:

If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “generic when used to describe a product made from the tusks of elephants.”

Trademark law recognizes that a term may be unprotectable with regard to one type of good, and protectable with regard to another type of good. Thus, the court said the very existence of arbitrary marks as a valid trademark category supports the conclusion that a claim of genericide must relate to a particular type of good or service.

Use as a Verb Does Not Automatically Constitute Generic Use

Moving to the second point, the court said a trademark may be used as a verb, or even as a noun, without becoming generic. In connection with Lanham Act amendments, the court noted the following from a Senate Report:

A trademark can serve a dual function—that of [naming] a product while at the same time indicating its source. Admittedly, 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. But this is not conclusive of whether the mark is generic.

In this way, the court said Congress has “instructed us that a speaker might use a trademark as a noun and still use the term in a source-identifying trademark sense.” That was the case in Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 (9th Cir. 1982), where Coca-Cola had sued a restaurant (Overland) for trademark infringement, and Overland countered that COKE was generic, claiming that customers ordered “coke” only in a generic (“soda”) sense. The court rejected that argument, noting that the mere fact customers ordered “a coke,” i.e., used the mark as a noun, failed to show “what . . . customers [were] thinking,” or whether they had a particular source in mind.

To accept Elliott’s argument, the court said, would require “evidence regarding the customers’ inner thought processes.” The court explained further in a footnote:

We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for “a Kleenex tissue,” it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for “a Kleenex.” Instead, the party bearing the burden of proof must offer evidence to support a finding of generic use.

Relating it to Google, the court said that just as a customer might use the noun “coke” with no particular cola beverage in mind, or with a Coca-Cola beverage in mind, an internet user might use the verb “google” with no particular search engine in mind, or with the Google search engine in mind.

While Elliott had amassed a mountain of evidence ranging from expert surveys to dictionaries, it all focused on the public using “google” as a verb, and did not show evidence of “google” being a generic name for internet search engines.

Elliott also argued there is no efficient alternative for the word “google” as a name for “the act” of searching the internet regardless of the search engine used. But the court convincingly disposed of that argument:

Elliott must show that there is no way to describe “internet search engines” without calling them “googles.” Because not a single competitor calls its search engine “a google,” and because members of the consuming public recognize and refer to different “internet search engines,” Elliott has not shown that there is no available substitute for the word “google” as a generic term.

THE TAKE-AWAY

Ultimately, Elliott lost by focusing on the wrong question. Elliott focused on whether the relevant public primarily uses the word “google” as a verb, when the real question was:

…whether the primary significance of the word “google” to the relevant public is as a generic name for internet search engines or as a mark identifying the Google search engine in particular. 

BONUS TIP FOR IP LITIGATORS

The opinion includes analysis of several consumer surveys offered by Elliott. The court noted that consumer surveys may be used to support a claim of genericide “so long as they are conducted according to accepted principles.”

Two of Elliott’s consumer surveys, however, were excluded because they were not conducted according to accepted principles:

Specifically, these surveys were designed and conducted by Elliott’s counsel, who is not qualified to design or interpret surveys… [and, even] if the surveys were admitted, Elliott’s counsel would need to withdraw in order to offer testimony on the survey results.

For the latter point, the court cited Ariz. R. Sup. Ct. 42, E.R. 3.7 (“A lawyer shall not act as advocate at a trial in which the lawyer is likely to be a necessary witness . . . .”); see also Model Rules of Professional Conduct 3.7.

In California, see Rule of Professional Conduct 5-210 Member as Witness; but also see proposed California Rule 3.7 Lawyer as Witness (On March 30, 2017, the State Bar submitted the proposed rules to the California Supreme Court).

 

 

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Proving Trademark Infringement – Issues with Using Online Evidence of Confusion

On December 7, 2016, Eric Ball & William Pierog of Fenwick & West published a very useful and well-researched article, “Can Internet Comments and Search Results Prove Trademark Infringement?

The article explores what types of comments will and will not help prove confusion, backed by citations to particular cases in which the issues have arisen.

Some excerpts:

[O]nline comments… are not hearsay if they… are not offered for the truth of the matter asserted… [and instead…[are] offered to show assumed association between the parties.

…evidence that does show confusion about product source may only suggest that the internet user “appears to be someone so easily confused that even trademark law cannot protect her.”

…inattentiveness during purchasing decisions is relevant…[but] consumer inattentiveness at other times may not suggest product source confusion.

[Concerning search results as evidence of confusion]…Consumers expect a search to return unrelated products.

…evidence should be from relevant purchasers rather than vendors or third-party businesses.

 

Top 10 Trademark Tips for Nonprofits

1.  Conduct professionally-assisted trademark searches before adopting new marks. Choose distinctive protectable marks.  Make sure domain names are available for the marks before choosing them.  Register marks with the USPTO.  Consider registering the marks in other countries as well.  Ensure the marks are applied for and registered in the name of your organization and not individuals within the organization.  Comply with the requirements to maintain those marks.  Adopt a system to ensure all of the organization’s marks remain continuously in use.

2.  Register important domain names.  Don’t let the organization’s important domain name registrations lapse for failure to renew or re-register.

3.  Register important social media account names on Facebook, Twitter, Instagram, etc. Develop policies and rules for social media posts made on behalf of the organization.

4.  Learn the basics about trademarks and train employees, volunteers, members, chapters, licensees, affiliates, sponsors etc., about the proper use of the organization’s marks.  Use the proper symbols (TM, SM, or ®) next to the organization’s marks.  Consider creating a Style Guide showing how to use the organization’s marks consistently and in the proper form.  Every nonprofit organization should at least have a simple Style Guide.

5.  Don’t allow employees, volunteers, members, chapters, licensees, affiliates, sponsors, etc., to register the organization’s marks (or confusingly similar marks).

6.  Monitor USPTO filings, social media channels, and the internet (set Google Alerts, do periodic searches, check for domain names, etc.) for use of the organization’s marks (and confusingly similar marks).  Develop an internal system for handling issues of potential infringement.  Listen and watch for diversion of donations or confusion as shown by misdirected email, mail, complaints, donor communications, and donor patterns.  Identify and train personnel to recognize signs of potential confusion.

7.  Educate donors, potential anonymous donors, and those who advise them (estate planning attorneys etc.) about the organization’s correct name, so donors don’t write checks to or leave bequests to the “Animal Shelter” – thus creating ambiguity and exposing the organization to contested claims.  Create and disseminate materials that help planned-giving participants correctly name the organization in their estate planning documents.  Make it easy for donors and their advisors.

8.  Require written signed licenses from affiliates and other third parties who will use the organization’s marks.  Ensure the licenses put appropriate limits on how the marks can and cannot be used.  Include terms under which the license can be terminated.  Inspect and monitor the quality of goods and/or services provided under the marks.

9.  Consult with knowledgeable nonprofit entity counsel to assure licensing, sponsorship, co-ventures, cause marketing, and related activities fit within recognized exemptions and do not give rise to undesired tax consequences or jeopardize the organization’s exempt status.

10.  If the organization receives a cease-and-desist letter alleging trademark infringement or other claims, contact an attorney before responding.  Priority of use, registration, public relations, confusion factors, and other issues must be reviewed and considered before responding.  Disputes often can be resolved short of a lawsuit.

The “Top” Copyright and Trademark Articles Collection

Here’s a collection of links to “Top” articles discussing tips, benefits, traps, warnings, distinctions, myths, and explanations of copyrights and trademarks:

Top 10 Benefits of Trademark Registration

The Top Ten Mistakes Made by Trademark Owners

Top Ten Trademark Tips for Every Business

Missing the Mark: The Top 10 Trademark Mistakes in Advertising Campaigns

Top 7 Costly Mistakes to Avoid with Trademarks

Top Ten Most Important Trademark Cases

Top Ten Copyright Myths

The Top 10 of Copyright

Top Ten IP Concerns When Working With Independent Contractors

Top Ten (Actually Eleven) Copyright And Trademark Tips For Nonprofits

Top Ten Intellectual Property (IP) Law Traps

Top 10 Things Every Artist Needs to Know About Copyright and Trademark

 

[Matterhorn image courtesy of  Pixabay -under Creative Commons CC0]

Trademark Refresher:  What is a Family of Marks?

A family of marks is a group of marks (e.g., MCNUGGETS, MCSKILLET, MCCAFE, MCGRIDDLES) having a recognizable formative common characteristic (e.g., MC), wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner (e.g., McDonalds Corp).

Simply using a series of similar marks, however, does not of itself establish the existence of a family of marks.  Courts and the USPTO consider the use, advertisement, and distinctiveness of the marks, as well as how the common feature contributes to the purchasing public’s recognition of the marks as being of common origin.  To demonstrate such recognition, an owner must show that the marks comprising the family have been advertised or used in everyday sales activities in such a way so as to create common exposure and recognition of common ownership based on the common feature.

As parenthetically indicated above, a well-known example is the McDonald’s Corporation family of “MC” marks, which include MCNUGGETS, MCSKILLET, MCCAFE, MCGRIDDLES and so on.  McDonald’s has successfully opposed attempts by others to register “MC” marks over the years and it actively pursues perceived infringers of its family of “MC” marks.  See McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014) (59-page TTAB decision sustaining McDonald’s opposition to MCSWEET for pickled gourmet vegetables based on dilution and likelihood of confusion with the “MC” family of marks).

PRACTICE TIPS

A trademark owner does not need to own trademark rights in the formative common feature itself (e.g., “MC”) in order to establish rights to a family based on the common feature.  J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463 (Fed. Cir. 1991).

The common feature, however, must be distinctive and not generic or “merely descriptive” of the goods or services.  Note that a descriptive term is not “merely descriptive” if it has acquired distinctiveness (aka “secondary meaning”) through extensive use and advertising.  Thus, a descriptive term can serve as a common feature for a mark family if there is a strong showing of secondary meaning (acquired distinctiveness) in the descriptive common feature.  See, e.g., Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387, 395 (7th Cir. 1992) (refusing to recognize a family of “–JET” marks for agricultural spray nozzles); see also, Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 745 F. Supp. 2d 1359 (S.D. Fla. 2010) (“To the extent Miller’s is claiming trademark rights in a family of marks with “ALE HOUSE” as a common surname, a determination that the “ALE HOUSE” surname is generic would be fatal to the entire mark.”)

Finally, for a good resource on arguing family of marks in the context of USPTO trademark registration or Trademark Trial and Appeal Board proceedings, go here.

(photo: Thank you William A. Ling for permission to use his zebra-family photo.)