Lessons From Google Surviving The Genericide Attack

The U.S. Court of Appeals for the Ninth Circuit recently affirmed a federal district court’s grant of summary judgment in favor of Google Inc. in connection with an attempt to cancel the “Google” trademark registrations under the theory that the mark has become computer-1330162_1920 (2)a generic term used by the public for searching on the internet. The ruling is a victory for brand owners, especially those who risk genericness challenges because of the success of their products or services and the widespread (mis)use of their marks by the public.

Overview of the Google Case

In 2012, Chris Gillespie and David Elliott registered 763 domain names that included the word “google” and an additional term identifying a specific brand, person, product, location or event such as googledisneyworld.com, googledallascowboys.com and googledonaldtrump.com. Google filed a cybersquatting compliant under the Uniform Domain Name Dispute Resolution Policy,[1] claiming that the domain names were confusingly similar to the “Google” trademark and were registered in bad faith. The complaint was filed with the National Arbitration Forum (“NAF”), and the NAF found in favor of Google and transferred the domain names to Google.[2] Elliott and Gillespie (collectively “Elliott”) then filed an action in the Arizona district court petitioning to cancel the “Google” trademark[3] under the Lanham Act,[4] arguing that the word “google” is primarily understood as a generic term universally used to describe the act of internet searching.

The parties filed cross-motions for summary judgment, with Elliott arguing that (1) it is an indisputable fact that a majority of the relevant public uses the word “google” as a verb (e.g., “I googled it”), and (2) verb use constitutes generic use as a matter of law, and Google arguing that verb use does not automatically constitute generic use and that Elliott failed to present sufficient evidence to support a jury finding that the relevant public primary understands the word “google” as a generic name for internet search engines. The Arizona district court found in favor of Google,[5] and ruled that, even if the term “google” has become known — and is used as a verb — for searching the internet, that doesn’t necessarily mean that the primary significance of the term “google” to the relevant public is as a generic name for internet search engines generally instead of as a mark identifying the Google search engine in particular. On May 16, 2017, the U.S. Court of Appeals for the Ninth Circuit affirmed the district court’s grant of summary judgment.[6]

Before we discuss the court’s decision in more detail, let’s review some of the concepts framing the issues raised in the Google case.

The Spectrum of Distinctiveness — Weak vs. Strong Marks

Not all marks are created equal, and some terms can never be marks. The generally recognized categories of types of terms on the “spectrum of distinctiveness” or “distinctiveness/descriptiveness continuum” (which roughly reflects their eligibility to obtain trademark status and the degree of protection accorded from weakest to strongest) are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful terms. Generic terms are terms that the public understands primarily as the common name for the goods or services, such as “Salt” when used in connection with sodium chloride or “The Chocolatier” for a store providing chocolate candy. “Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.”[7] In other words, because generic terms identify the product or service and not the source of the product or service, generic terms are not protectable. On the other end of the spectrum are arbitrary and fanciful terms. Arbitrary marks are common words that are used in a unique way such that the words have no relationship to the product or service, such as “Apple” for computers. Fanciful marks are terms that have been invented or “coined” for the sole purpose of functioning as a trademark, such as the term “Google” for an internet search engine[8] or “Xerox” for copiers. Arbitrary or fanciful marks are “automatically entitled to protection because they naturally serve to identify a particular source of a product.”[9]

However, even a strong arbitrary or fanciful mark has the potential to lose its trademark significance and become generic.

Genericide — When Good Marks Go Bad

The Lanham Act allows cancellation of a registered trademark if it is primarily understood as a “generic name for the goods and services, or a portion thereof, for which it is registered.”[10] This phenomenon has become known as “genericide” — when the public appropriates a trademark and uses it as a generic name for a particular type of goods or services, irrespective of the source of those goods or services. Once a mark becomes generic, it is no longer subject to trademark protection — and “linoleum,” “thermos” and “videotape” are some well-known victims. As McCarthy on Trademarks and Unfair Competition describes, genericide can occur for a variety of reasons: Continue reading

10 Legal Considerations for Entrepreneurs – Part 1

startup-1018512_1920Becoming an entrepreneur is an exciting endeavor…but being your own boss often requires that you wear many different hats and take responsibility for all of the details involved with operating a business. After you’ve evaluated your business idea and researched the market, and while you’re in the process of creating your business plan and determining startup costs and other essentials to get your business up and running, here are some legal considerations to keep in mind…

1. Hire Professionals.

Attorneys, accountants and other professionals are invaluable resources for a new business owner, as they can help you navigate through the many details and requirements necessary to start and run your business, including those mentioned below. Seek referrals from friends, family, and other business owners. You may want to find professionals who are familiar with your particular industry and/or working with new businesses. Having good professionals on your business team (especially in the beginning) can be one of the best investments you’ll ever make in your business, and, hopefully, you will develop relationships with these advisors that will last for the life of the business (and beyond). It is often much less expensive to hire a professional to do something right the first time than it is to hire a professional to fix a problem after-the-fact. Although a great deal of information, “forms” and resources are available online and can be helpful for educational purposes, relying on the internet to be your lawyer will likely come back to haunt you at some point.

2. Name Your Business (or Product).

Deciding on the name of your business is one of the most important – and sometimes most difficult – aspects of starting a new business. Not only will you want to make sure the name is appealing to customers, but you’ll also want to make sure the name isn’t already being used by a third party providing identical or similar products or services. Before using or registering a business name, you should at least perform a quick “knockout” availability search: (a) check for entity names and state trademark registrations with Secretary of State Offices where business will be done; (b) search the federal U.S. Patent and Trademark Office (USPTO) trademark database; and (c) perform a Google search to determine whether any third party has common law rights to the name. If you are in a regulated profession or industry, there may be restrictions of what you can and cannot include in your business name. You’ll also want to make sure the domain name is available for your business name.

Once you decide on a name (and type of entity) and are comfortable that it’s available to use, you’ll need to register your name with your Secretary of State’s Office and potentially with your County Clerk’s Office as well.

Please note that registration of a business name with one or more Secretary of State offices does not guarantee that you have exclusive rights to use that name and/or are not infringing another party’s mark. The Secretary of State does not allow registration of identical business names in its state (mostly to avoid internal confusion). However, multiple entities can register identical fictitious, assumed or doing business as (d/b/a) names in the same state.  [For example, if XYZ Company, LLC is already registered with the Texas Secretary of State, another company could register ZYX Products, LLC and then register a fictitious name for XYZ Company…so it would be ZYX Products, LLC, d/b/a XYZ Company.]

Trademarks or service marks, on the other hand, can be used by multiple entities at the same time, so long as they are not used in connection with the same or similar goods or services and customers are not likely to be confused as to whether the goods or services are provided by the same entity. If your entity is also using its business name as a trademark or service mark in connection with its products or services, then it is advisable to have your legal counsel perform a trademark search to be as certain as possible that no other individual or entity is also using the mark for similar goods or services.  Depending on the results of the search, filing a trademark application with the USPTO to obtain a federal trademark registration for the mark (and/or logo) may be advisable.

Click here for more information about selecting and protecting names and marks.

In Part 2, we’ll discuss legal entities, financing your venture, and related matters.

Can My Company Say “Super Bowl” in Our Super Bowl Ad?

football-player-260556_1280-2By now, you’ve probably seen and heard countless promotions mentioning “The Big Game”…but maybe you’ve never considered why they don’t just come out and say the actual name of the game.  Well, the term Super Bowl is a registered trademark owned by NFL Properties LLC.  And with advertisers spending $5 million or more on 30-second commercial spots for the Super Bowl, it’s little wonder that the NFL is so protective of its trademarks and copyrights.  (And, even if the price tag for an ad isn’t quite as high, the same is true for other big events and recognizable brands, such as the World Series, the Oscars, March Madness and the Final Four, the Emmys, the Grammys, and the Olympics.)

You might remember hearing about the Indiana church that received a cease and desist letter from the NFL related to its plan to project the game on a big screen and charge admission for a Super Bowl party in 2007.  Although it may seem harsh to go after a church, the letter (which had as much to do with the church’s use of the Super Bowl mark as it did with the church’s plans to show the game on a big screen) resulted in that church — as well as other churches that got wind of the letter — to cancel their plans.

Trademark owners have a duty to police their marks in order to avoid losing rights in the marks.  In other words, mark owners are legally required to protect against unauthorized uses of their marks, or they risk diminishing the value of their brands, damaging their goodwill, and weakening their marks and the value attached to those marks.  It would be pretty hard to justify the sponsorship fees and ad rates that “official” sponsors and advertisers pay if any of these mark owners allowed anyone else to benefit without having to shell out for that privilege.

And although sportscasters and news providers can say “Super Bowl” to talk about the game (thanks to a trademark fair use exception for criticism and news reporting), unless you are an approved, official sponsor, you’ll need to get creative instead of using the “Super Bowl” mark (or hashtag, for all you ambush marketer wannabes) to promote your products, services, or sales.

So, enjoy “The Big Game” and all of the “Star-Studded Red Carpet Events” during “Awards Season,” because “The Battle of The Brackets” in March will be here before you know it!

 

Why Should I Register My Trademarks?

TrademarkIn the United States, trademark rights are based on (1) priority (who used the mark first), (2) territory (the geographic area(s) where the mark has been used), and (3) use (whether products or services are actually provided under the mark).

Generally, the first to either use a mark in commerce or file an intent-to-use application with the United States Patent and Trademark Office (USPTO) has the ultimate right to use and registration of the mark.

Common law rights arise when products or services are offered for sale in connection with the mark.  However, common law rights are limited to the trade area in which you actually use the mark and those rights may be limited or even prohibited by prior senior uses of the same or confusingly similar marks.

A trademark owner may also register a mark in one or more individual states through Secretary of State Offices.

Although registering your mark with the USPTO is not required to establish rights in a trademark, there are many important benefits of federal trademark registration with the USPTO.  For example, upon registration of a federal trademark, the registrant obtains rights to the mark throughout the United States retroactive to the date of filing of the application. The registrant also obtains the right to stop junior users from adopting confusingly similar marks in overlapping trade areas or anywhere the registrant has acquired goodwill in such mark.

Here are some of the benefits of registration:

  • Registration provides constructive notice nationwide of the mark owner’s claim in the mark and evidence of ownership of the mark.
  • The mark owner has the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
  • The mark owner may bring lawsuits for infringement in federal court.
  • The mark owner may be entitled to recover profits, damages and costs of infringement, attorneys’ fees and treble damages.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • The mark can obtain incontestable status after continuous use for 5 years after the date of registration on the Principal Register (which limits third parties’ rights to contest your mark).
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

An application for trademark registration requires: (1) a completed application form, (2) a nonrefundable filing fee ranging from $225-$375 per class of goods/services, and, for marks already being used in commerce, (3) specimens of the mark showing use of the mark in connection with the applicable goods/services.

Click here for more information about how to select and protect a trademark.

 

Trademarks – Principal Register vs. Supplemental Register

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Some marks are not as strong as other marks, and certain marks that are not eligible for registration on the Principal Register, but are “capable” of one day distinguishing an applicant’s goods or services (such as descriptive terms) upon the acquisition of secondary meaning (proof that the mark has become distinctive as applied to the applicant’s goods or services in commerce), may be registered on the Supplemental Register.

Descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service.  Examples of descriptive marks include BANK OF AMERICA for a bank headquartered in the United States and WHOLE FOODS for a grocery store that sells health foods (both of which have since acquired distinctiveness and are now registered on the Principal Register).

Only marks actually used in commerce may be registered on the Supplemental Register, so an intent-to-use application is not eligible for registration on the Supplemental Register until the applicant has filed an acceptable allegation of use.

Benefits of Registration on the Supplemental Register

While not the preferred trademark register, registration on the Supplemental Register does provide the following benefits over purely common law rights (i.e., no registration at all):

  • Notice of the mark to anyone who searches the USPTO records.
  • Protection against third-parties registering confusingly similar trademarks at the USPTO.
  • Right to use the official registered trademark symbol “®” as notice of federal registration.
  • Right to sue infringers in federal court and have federal law control key issues of validity, ownership, infringement, injunctions and damages.
  • Ability to obtain foreign trademark protection in countries with international treaties.
  • After five years of usage and/or registration on the Supplemental Register, the registrant can apply for registration of the mark on the Principal Register.

Benefits of Registration on the Principal Register Not Applicable to the Supplemental Register

The following benefits of registration on the Principal Register are not enjoyed by registration on the Supplemental Register:

  • Constitutes prima facie evidence of the registrant’s exclusive right to use the mark nationwide.
  • Constitutes constructive notice of the registrant’s claim of ownership to eliminate the good faith defense.
  • Has a presumption of validity.
  • Carries a presumption that the registrant is the owner of the registered trademark.
  • May be filed with the United States Customs Service to prevent importation of infringing foreign goods.
  • Can become incontestable after five years of registration.

Acquired Distinctiveness/Secondary Meaning

A mark that is descriptive in nature and/or registered on the Supplemental Register cannot likely be registered on the Principal Register without a showing that the mark has become distinctive of the applicant’s goods or services in commerce, namely, that the mark has “acquired distinctiveness” or “secondary meaning.”

After five years of use or registration on the Supplemental Register, a statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made is usually sufficient to show acquired distinctiveness/secondary meaning.

However, depending on the nature of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. The mark owner may then submit actual evidence of acquired distinctiveness.

The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.

To support the claim of acquired distinctiveness, a mark owner may respond by submitting additional evidence. Such evidence may include specific dollar sales under the mark, advertising figures (or indicating the types of media through which the goods and services have been advertised (e.g., national television) and how frequently the advertisements have appeared), samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  So, if you are using a descriptive mark, it is wise to keep these requirements in mind and keep track of this information so it is available if needed.

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness: (1) length and exclusivity of use of the mark in the United States by the applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) the applicant’s efforts in the United States to associate the mark with the source of the goods or services, such as unsolicited media coverage and consumer studies.  A showing of acquired distinctiveness need not consider all these factors, and no single factor is determinative.

 

Protecting Your Marks Outside of the United States: Foreign Trademark Priority Filings

Trademark protection is geographic in scope…meaning that a trademark is only protected in the geographic area(s) (state/region/country) in which the mark is used or registered.

earth globeA United States trademark application or registration with the United States Patent and Trademark Office (“USPTO”) does not protect a trademark in any foreign country.  However, U.S. trademark applications and registrations can be used to obtain trademark protection in other countries and vice versa.

Six-Month Priority Foreign Filings

If the foreign trademark application is filed within six months of the U.S. application, the foreign application can claim “convention priority.”  This means that the foreign application will be treated as if it was filed on the same day as the U.S. application.  Nearly all countries are members of the Paris Convention, which put this rule in place.

“Claiming priority” in this six month window can prove to be a major advantage by providing you with the earliest possible filing date for your mark.  If other applicants file similar marks after that priority date, they will be rejected or suspended. In other words, your application will receive priority over applications filed after not only your actual filing date, but also over applications filed between your actual filing date and your priority date.

Taking advantage of priority foreign filings also allows you the opportunity to spread out the costs associated with trademark filings over a six-month period and gives you time to assess your international brand protection strategy without sacrificing any protection…which can be significant, especially for a new venture or brand.

Foreign trademark applications filed after this six-month “priority” date take the actual dates on which they are filed.

Other Cost-Saving Measures and Strategies

In many cases, there are mechanisms available that provide efficient and cost-effective ways of obtaining protection for your brand simultaneously in multiple countries.  For example, the Madrid Protocol allows a trademark owner to seek protection in any of the almost 100 member countries by filing one application and designating as many member countries as it chooses.  It is also possible to file a single Community Trade Mark (“CTM”) application for a trademark covering all of the countries in the European Union.  You can designate the EU/CTM in your Madrid Protocol application.