Grow or Go to Zero

What business doesn’t want its assets to grow over time?

The choice you make at the start can have a huge impact on whether the value of your trademark will grow or wither.

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If you start with a wonderful trademark like Nest®, Staples®, Google® or Moo®, the sky is the limit for trademark value. Whether the mark actually attains that value depends on lots of things, but at least there’s nothing about the trademark itself that will hold you back.

If you start with a trademark that:

  • Consists of words that everyone and her brother are using, like Office Depot® or United®; or
  • Merely describes what you sell, like Radio Shack® or Century Theatres®; or
  • Is already owned by someone else;

then you’re starting with two strikes against you. Your trademark will be at best neutral and at worst a liability.

Coming up with a clever trademark is hard. Coming up with a trademark that is clever and that no one else is using is even harder but, isn’t it worth it so you don’t have to worry about its holding you back? Isn’t it worth the effort and the cost to get this one thing right at the beginning?

 

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Google Genericide

In 2012, Chris Gillespie registered 763 domain names that included the word “google.”[1]

A few months later, Google took ownership of all of them using a special rule called “UDRP,” which is available only to registered trademark owners.[2]

Gillespie then tried to deregister two Google trademark registrations, claiming that GOOGLE had become generic.[3]

As we’ve already seen, if your product name becomes the generic word for the product you’re selling, you can lose your rights and your registration: linoleum, yoyo, cellophane.

Gillespie submitted the results of a Thermos survey[4] to show that “a majority of the relevant public uses the word ‘google’ as a verb – i.e. by saying ‘I googled it.’”[5]

The Ninth Circuit looked at the evidence Gillespie provided and asked whether the GOOGLE trademarks had “taken the ‘fateful step’ along the path to genericness.” Was the “primary significance” of Google “the name for a particular type of good or service irrespective of its source.”[6]

The court made it clear that just because someone uses a trademark as a verb, she isn’t necessarily using it a generic word: We have to explore what’s her mind. What does she mean when she says: “I googled adorable cat pictures”?

  • I used Google to search for adorable cat pictures.[7]
  • I used a search engine to search for adorable cat pictures.[8]

If she means the first sentence, she’s not using GOOGLE in a generic way.

The court said that Gillespie’s suit “cannot survive . . . based on ‘sheer quantity’ of irrelevant evidence”[9] showing that people “verb” Google. The surveys needed to be worded in a way that reveals what’s in the speaker’s mind.

So, go ahead and Beeline that trademark. Just be sure and do it at beelinelegal.com.

 

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[1] For example: googledisney.com; googlebarackobama.net; googlenewtvs.com.

[2] The Uniform Domain Name Dispute Resolution Policy or URDP. You have to own a trademark registration that predates the offending domain name registration in order to use UDRP.

[3] Mr. Gillespie actually joined an existing lawsuit that had already been filed by David Elliot. Both the UDRP proceeding and the lawsuit involved registrations 2884502 and 2806075. Elliot v. Google, Opinion issued May 16, 2017, page 4.

[4] Gillespie’s Thermos survey asked 251 respondents: “’If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?’ Over half of the 251 respondents answered this question by using the word ‘google’ as a verb.” Elliot v. Google, Opinion issued May 16, 2017, page 15.

Google used a Teflon survey: “A Teflon survey begins with a brief lesson explaining the difference between brand names and common names. It then asks respondents to classify a series of words, including the trademark at issue, as either brand names or common names. In response to Google’s Teflon survey, a little over 93% of respondents classified ‘Google’ as a brand name. Most respondents also classified ‘Coke,’ ‘Jello,’ ‘Amazon,’ and ‘Yahoo!’ as brand names, and classified ‘Refrigerator,’ ‘Margarine,’ ‘Browser,’ and ‘Website’ as common names. Unlike [the] Thermos survey, Google’s Teflon survey offers comparative evidence as to how consumers primarily understand the word ‘google’ irrespective of its grammatical function.” Elliot v. Google, Opinion issued May 16, 2017, page 16. Internal citations omitted.

[5] Elliot v. Google, Opinion issued May 16, 2017, page 5.

[6] Elliot v. Google, Opinion issued May 16, 2017, page 7. Emphasis added.

[7] This is called a “discriminate verb.”

[8] You guessed it: This is called an “indiscriminate verb.”

[9] Elliot v. Google, Opinion issued May 16, 2017, page 20.

Oh No, DŌ!

There’s a really long line outside a shop that just opened in my neighborhood. And there should be, because the product is super yummy and everything about the packaging and delivery is spectacular, except . . .

Oh no, DŌ.

The owner of the shop, Cookie Dough, Inc., filed two applications with the Trademark Office to register DŌ for:

“Cookie dough; Cookies; Bakery goods and dessert items, namely, cakes, cookies, pastries, candies, and frozen confections for retail and wholesale distribution and consumption on or off the premises; Edible cookie dough not intended for baking; Frozen cookie dough.”

Unsurprisingly, the Trademark Office is refusing to register DŌ on a variety of grounds, including that “the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.”

In other words, Cookie Dough, Inc. can’t have exclusive use of the word “dough” for selling dough because people who sell dough, need to be able to say “dough” when selling dough. And in the world of trademarks “dough” and “DŌ” are the same thing.

DOThis is such a terrible shame, because they’re going gangbusters and I suspect they’re getting a lot of buzz. It’s just so sad to have to deal with a risk that could have been avoided, especially when everything else about the business idea and execution are so awesome.

 

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Genericide is Painful

Wouldn’t it be great if people started using your trademark as the word for what you’re selling?

  • “Google it.”
  • “I need a Kleenex.”
  • “I’d like a Coke, please.”

But Google, Kimberly-Clark, and CocaCola want you to know they spend plenty of time and money to make sure their trademarks don’t become the next linoleum, thermos, or escalator.

Here’s what the owners of those trademarks want you to say:

  •             “Use Google® to search for it.”
  •             “May I have a tissue?”
  •             “I’d like a Coke®, please.”  “We have Pepsi® products.” “In that case, I’ll have tap water.”

Because those companies know that becoming a generic word means their rights go *poof*. Suddenly, one of their most valuable assets falls into the public domain. Everyone can use it, including their competitors.

You want everyone to know your brand, love your brand, want your brand. But you never want them to verb your brand. Because then it won’t be your brand anymore. Because “too much of a good thing” is a real thing.

So, go on out there and make your trademark famous, just not that kind of famous.