Trademarks that were once tied to a single source and were not identifiers of a product sub-category may become generic overtime. Yo-yo, thermos, aspirin, cellophane, and escalator are all examples of prior trademarks that have devolved into generic names. Usually, the process of “genericide” takes place over a period of time and is caused in part by the actions of the trademark owner itself. The owner may fail to use the mark properly itself, using the mark to signify the product and not as a source identifier. An owner may fail to take action against third-parties that are using the mark with their own goods or the owner may encourage such widespread adoption by competitors and consumers. In both cases, the consuming public forms opinions about the mark, including the belief that the mark is not tied to any one company but is, in fact, a way to describe the product.
If a competitor that is accused of trademark infringement asserts the defense of trademark genericness, the competitor could prevail in having the infringement suit dismissed. Much worse, the asserted mark would be cancelled and the owner would be stripped of any right to enforce its mark against any one.
But how does a court draw the line between widespread use by consumers that is a testament to the strength and dominance of the brand, and widespread use of a generic word that consumers do not associate with any one source?
It isn’t uncommon to tell someone to “google it”. This is a clear use of the mark GOOGLE as a verb, which makes it more vulnerable to genericide, and it is short-hand for consumers who find it less cumbersome than the legally correct version, “use the Google search engine”. However, courts have recognized that even if Google is widely used in everyday speech to refer to the act of searching, the underlying name is so well-known to consumers, and its connection to a specific search engine so strong, that it would be counter-intuitive to the aims and purposes of trademark law to find such a mark unprotected simply by virtue of its use in rhetoric. One federal court in Arizona, in a case where the plaintiff registered over 700 domain names that included the word “Google”, found that the GOOGLE trademark was not generic. The court weighed certain factors such as the diligent marketing activities of Google over a period of 15+ years, widespread enforcement activities against misusers of the mark, and quality control oversight of licensees that were allowed to use the mark. The mere fact that consumers used the mark to sometimes describe the act of using the class of products that the mark belonged was a testament to Google’s significant marketing activities and strong enforcement.
Google should take some comfort in knowing that its brand is so widely recognized by consumers as an identifier for search engine services. While its mark has been taken to broadly classify the act of searching for something on the Internet, Google has taken its enforcement efforts seriously to clamp down on any genericide. Its recent decision to change the corporate name to “Alphabet” therefore shouldn’t be taken as a white flag in the battle of genericide, but as a new strategy in branding to account for Google’s multi-faceted business model.
So Google, a worldwide presence with an undoubtedly large and capable legal department to enforce its trademark rights, is probably safe from genericide (for the time being). What can small businesses do to prevent a brand name from becoming generic? The most important step is starting with a strong brand from the beginning. Selecting a word that is arbitrary or fanciful when applied to your goods or services is a good way to ensure that consumers don’t water-down the brand in favor of the name of the product. Secondly, after choosing a name, select the appropriate generic wording that follows the brand name (for example, LEVI’S jeans; LEVI’S is the brand and jeans is the generic name). After finalizing the name, make sure consumers know that it is in fact a brand name, and make sure they know how to use it properly with the generic name (for example, using a “Ask for ACME brand masking tape at your local hardware store” might be a good advertising campaign). Finally, take the initiative to find and confront competitors that are using your brand on their products, and document EVERYTHING including the initial letter and responses from the competitor. It may be necessary to sue obstinate competitors, but this is usually a last-straw type of action.