Courts recognize four trademark categories within which every mark must fall: (1) Generic marks, (2) Descriptive marks, (3) Suggestive marks, and (4) Arbitrary or Fanciful marks.[i] At the far end on the spectrum, warranting the greatest level of trademark protection, stands arbitrary or fanciful marks—those words which offer no inherent description of the product. On the opposite end of the spectrum lies generic marks—those made up of common descriptors to which courts afford no trademark protection.[ii]
Occasionally, a mark that originates as arbitrary, a creative mark that offers no description or connection to the characteristics of the product, is transformed into a generic mark. When a product reaches the coveted level of universal recognition, it may in itself become a description, a generic word for the product. Examples are plentiful: Band-aid, Aspirin, Kleenex … and possibly even Google.[iii] This so-called “genericide” is plainly illustrated when the public begins to use the mark to describe the product itself, regardless of the manufacturer.[iv]
“If the relevant public primarily understands the 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.”[v]
Out of this concept came Elliot v. Google, Inc. following Plaintiff Gillespie’s acquisition of domain names that contained the word “google” such as “googlenewtvs.com” and “googledisney.com”.[vi] Google challenged the marks, and as a consequence, the National Arbitration Forum transferred the disputed domain names to Google.[vii]
Elliot reacted by petitioning for the cancellation of Google’s trademark, stating that the mark had become “a generic term universally used to describe the act[] of internet searching.”[viii]
Elliot argued that the Google mark had become nothing more than a common verb, falling within the generic mark category and therefore ineligible for trademark protection.[ix] This argument raised a particularly interesting question that the Ninth Circuit had not previously encountered—if a mark comes to describe an act, has it become generic?
The Lanham Act itself provides a textual answer: “[if] the registered mark becomes the generic name for… the goods or services for which it is registered, a petition to cancel registration for only those goods or services may be filed.[x] The Act makes no mention of the unusual situation in which an arbitrary mark comes to represent a common action (like “googling”).
With the literal language of the Lanham Act in mind, it seems that the proper inquiry is whether Google has become a generic name for search engines (since that is the product/service) and no longer identifies the source.[xi] To that end, Elliot advanced the argument that the very fact that Google is used as a verb establishes that it is no longer used to describe the source of the product/service (the underlying purpose of a trademark).[xii] While the argument makes sense initially— that a verb cannot possibly function as a descriptor identifying the source of a product—the Lanham Act provides a different answer.
The Lanham Act states that it is an “accepted concept that a trademark can serve a dual purpose.”[xiii] Simply because a mark is used as a different form of speech (a verb or noun as opposed to an adjective), does not mean that the mark loses its source-identifying function. For example, when someone orders a coke (noun), the phrase still identifies the source of the cola product.[xiv] “In the same way, we now recognize that an internet user might use the verb ‘google’… in a discriminate sense, with the Google search engine in mind.”[xv]
The Ninth Circuit concluded, therefore, that verb use of a valid trademark will not make it generic because a claim of genericide “must relate to a particular type of good or service”—not a use.[xvi] Furthermore, the fact that a mark is used as a verb does not mean that it is no longer being used to identify the source—the dual purpose nature of a trademark allows for verb use while still maintaining its source-identifying function. [xvii]
[i] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
[ii] Id.
[iii] Bayer Co. v. United Drug Co., 272 F. 505, 510 (S.D.N.Y. 1921).
[iv] Elliot v. Google, Inc., 860 F.3d 1151, 1156 (9th Cir. 2017).
[v] Id.
[vi] Id. at 1154.
[vii] Id.
[viii] Id. at 1155.
[ix]Id.
[x] 15 U.S.C. § 1064(3) (emphasis added).
[xi] Elliot, 860 F.3d at 1157.
[xii] Id.
[xiii] S. Rep. No. 98-627, at 5 (1984).
[xiv] Elliot, 860 F.3d at 1158.
[xv] Id.
[xvi] Id. at 1158–59.
[xvii] Id. at 1159.
