Trademark Graveyard Part II

Generonyms are words that were once trademarks but became the generic word for the product or service. When a trademark becomes a generic word, its life as a trademark ends. It is said to have committed genericide.

How many of these did you know were once trademarks?

  • zipper
  • aspirin
  • escalator
  • granola
  • yo-yo
  • linoleum
  • trampoline
  • monopoly
  • power bar
  • ace bandage
  • dumpster

Do you ever say “I googled it” or “Do you have a kleenex?” or “I like to rollerblade” or “Someone got magic marker on my sleeve”? If so, you’re contributing to the possible demise of these trademarks, whose owners work very hard to make sure that the words don’t become generonyms.

  • Popsicle
  • Realtor
  • Hi-Liter
  • Kleenex
  • Baggies
  • Xerox
  • Walkman
  • Plexiglas
  • Rollerblade
  • Sharpie
  • Google
  • Crock Pot
  • Rolodex
  • Magic Markers
  • Ping Pong
  • DayGlo
  • Freon
  • Sheetrock

There are also words that people think were once trademarks but never were. I have only two of these on my list. Can you think of any others?

  • Jordan almond
  • PDA

 

Photo modified for use in featured image is CC0 1.0 Public Domain Dedication. Thanks to the photographer, Christian Hart, for placing his photo in the public domain. Mr. Hart does not endorse this blog, this post, or the modified use of his photo.

 

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Trademark Graveyard

Trademark rights are born when someone starts using a trademark to sell stuff: The minute you offer CRYPT brand breath mints for sale, you start to have “common law” trademark rights in CRYPT for breath mints.

You can expand and strengthen your rights by registering the trademark.

Unlike patents and copyrights, trademark rights have the ability to live forever, but they can die.

What happens to common law rights?

What happens to rights from the registration?

Genericide DEAD DEAD
Owner stops using the trademark to sell stuff Die eventually when the trademark fades from consumers’ memory. Die when owner is unable to renew the registration. (In order to renew, you still have to be using the trademark.)
Registration expires. Live on and can be used to get another registration. DEAD

 

1024px-Standardgasstation.jpgWhen companies change their names, they often try to keep the rights to the old name alive just as a precaution against someone else’s using it.

Chevron® continues to operate a few stations under the STANDARD OIL® trademark.

14313464941_4e5e8c83e0_z.jpg

In 1991 Kentucky Fried Chicken® changed its name to KFC®, but they still use the full name sometimes.

International Harvester switched to Navistar® in 1985, but it defended the old mark in an opposition as recently as 2007.

Dunkin’ Donuts® is experimenting with Dunkin’®. If that works for them, I wonder if they’ll let the rights to the full name die.

 

 

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Photo of tombstone © 2009 Jo Naylor modified by Michele Berdinis under Attribution 2.0 Generic.

Photo of Standard Oil®/Chevron® station © 2009 Coolceasar. Used with permission under GNU Free Documentation License.

Photo of Kentucky Fried Chicken® door handle is © 2014 Mike Mozart. Used with permission under Creative Commons Attribution License 2.0.

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.

Wham-O® Wins

Kick BagsAmong my many pathetic hobbies, is an ongoing search for the company that owns the most trademarks in danger of committing genericide.* The current leader is Wham-O Holding, Ltd., which is the proud owner of these endangered registered trademarks:

  • Hacky Sack®
  • Frisbee®
  • Hula Hoop®
  • Slip ‘N Slide®

What’s going on here? Does Wham-O lack the creativity to create a good trademark?

No. The problem is that they’re too creative. They make stuff that no one has ever seen. Before there was a Wham-O Frisbee, there was nothing else like it. So everyone refers to the thing using the trademark, because it’s pretty much the only word out there.

“Hey, cool, what is that?”

“It’s a Hacky Sack brand kick bag,” said no one ever.

If you invent a new thing, in addition to coming up with the trademark, come up with the generic phrase that goes with it.

  • Frisbee® brand flying disc.
  • Hula Hoop® brand, um, toy, um, hoop?

It’s hard to name something that novel. But it’s an important step. A long time ago, Bayer tried too late to get the headache suffering public to refer to its product as Aspirin brand acetylsalicylic acid.  No less than the brilliant Judge Learned Hand wrote:

Had Bayer “not been indifferent . . ., it could have protected itself [at the start]. . .. Instead . . ., they [built up the] demand without regard to the trade-mark. Having made that bed, they must be content to lie in it.”

Yup. That about sums it up.

 

*Genericide is what happens when a trademark becomes the generic word for the good it’s used the sell. Think ESCALATOR.

 

 

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.