How to avoid death by ‘genericide’
Distinction of trademarks a key element
One of the fundamental tenets of trademark law is that your trademark has to be distinct. The more distinct your trademark, the more likely it is to be able to be protected. The more common it is, the harder time you are going to have enforcing it against copycats.
That’s why it is always a good idea for companies just starting out, to search for the availability of a trademark before actually using it. It’s important to see whether anyone else has laid claim to what you have in mind ( in which case you probably can’t get your trademark approved) or whether tons of people have had the same idea (in which case you may get approved but will have a very hard time stopping someone from using your trademark). Because being distinct is such a hallmark of a strong trademark, madeup words ( think Quiznos) tend to make for the best, most easily protected marks.
By extension, then, another principal element of trademark law is that a mark cannot describe the nature of the goods or services associated with it. For example, you can’t own the trademark “Gas Station” if you operate a gas station. The idea being that nobody should own the exclusive rights to the words that describe the actual thing you are selling.
So, if a trademark must be distinct and cannot be descriptive, it follows that a trademark must not become generic. “Genericide” ( yes, that is the term used by courts) can occur when the public appropriates a trademark and uses it as the generic term by which to describe goods or services, regardless of who actually made, sold or branded those items. In rare cases, owners of powerful brands may end up confronting this when their or others’ goods and services become inseparable from the trademark in the minds of the public.
Think of the trademarks that have either fallen victim to genericide or are at very strong risk to: Thermos, Q-Tip, Aspirin, cellophane, escalator, Kleenex, Polaroid, Band- Aid or Google. Wait, Google? Are we really at a point at which online searching is so inseparable and synonymous with Google that its trademark has become generic? Actually, no, we haven’t.
While most of us may use the phrase “googling” interchangeably with “searching online,” a U. S. court recently reasoned in a fascinating decision that the trademark Google had not yet fallen prey to the dreaded genericide. At issue was whether two plaintiffs could use the word “google” in a series of domain names they had registered, including googledisney. com and googlebarackobama.net.
The court decided in Google’s favour, concluding that the iconic trademark was still capable of being protected from unauthorized use by others. This is in contrast with a U.S. court decision that found the trademark Aspirin had become generic, owing to the fact that consumers described pain medication of this type only as Aspirin and never as acetylsalicylic acid.
In Google’s case, while we often appropriate the trademark as a noun or verb to refer to online searching, the court found that people can still, and do, describe online search engines in terms other than “google.” To find that the trademark had become generic would require a determination that there is no efficient alternative to describe online searching and online search engines other than to use the term “google” and, though it may often seem that’s the case, our culture has apparently not yet reached that stage of googledominance nor, therefore, genericide (googlecide?).
If Google is vulnerable, might trademarks such as Uber, CrossFit or Froyo be far behind? Financial Post Chad Finkelstein is a franchise lawyer and registered trademark agent at Dale & Lessmann LLP ( www. dalelessmann. com) in Toronto. cfinkelstein @ dalelessmann. com Twitter. com/@ ChadFinkelstein