Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Hurray! The Path Is Now Clear for the Registration of Vulgar Trademarks!

Posted in Brands, Trademarks

Many Trademarkology readers will recall that the Supreme Court in June 2017 held that the Patent and Trademark Office could not legally refuse registration of a mark on the ground that it was disparaging. As a result, a mark that the PTO considered a racial slur could be registered. That case reversed years of Trademark Office practice and struck down a longstanding provision of the federal trademark law. The trademark register was now open to offensive racial or ethnic terms and other disses.

But maybe trademarks that disparage people aren’t your thing. Maybe you just want to register a trademark that is more generally considered vulgar or offensive. Scatological terms, perhaps, or vulgar terms for sex acts? Well, great news! In December, the court that oversees the PTO held that registration of those types of terms cannot be refused just because they’re offensive.

The earlier case, Matal v. Tam, involved the mark THE SLANTS, which the applicant used as the name of a music group whose members were of Asian heritage. The PTO refused registration based on a provision in §2(a) of the Lanham Act prohibiting registration of marks that “disparage . . . or bring . . . into contemp[t] or disrepute” persons living or dead, concluding that a substantial portion of Asians would consider the term offensive. The Court of Appeals for the Federal Circuit held that that prohibition violated the First Amendment because it discriminated among trademarks based on the expressive content of the marks and particularly on the viewpoint being expressed. The Supreme Court agreed, noting that “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”

The December 2017 case, In re: Brunetti, involved an application to register the mark FUCT for use with clothing. The PTO refused registration, finding that the mark comprises “immoral” or “scandalous matter” and is therefore unregistrable. That decision was made before the Tam case was decided in either the Federal Circuit or the Supreme Court, so there was no reason to believe the ground was shifting for offensive trademarks, and it was based on a different part of §2(a) than the one at issue in Tam.

After the decision in the SLANTS case, the outcome in Brunetti seemed pretty obvious, but the government gamely made its arguments. One argument was that because the “immoral or scandalous” prohibition was viewpoint-neutral in that it did not only prohibit registration of marks that said bad things about people as in Tam, it was not covered by the earlier case and also did not violate the First Amendment. The applicant, for his part, did his best to undermine his own credibility by arguing that FUCT would not be seen as vulgar but was a term coined from the words Friends U Can’t Trust – “Wait, what did you think it meant, your honor?”

The court wasn’t buying any of those arguments. It agreed with the PTO that a significant part of the public would find the term vulgar and offensive, so that registration was banned by the “immoral or scandalous” provision. But the court held that registration could not legally be refused for that reason. Because the “immoral or scandalous” prohibition is a content-based restriction on speech, it is only valid if it serves a compelling government interest and is narrowly drawn to serve that interest. It is not. It also is vague, as illustrated by the fact that different examining attorneys at the Trademark Office came to different conclusions about whether terms including BS, COCAINE, TURD, and MILF were so immoral or scandalous as to preclude registration. So the court concluded that the “immoral or scandalous” provision is unconstitutional.

Neither this case nor the SLANTS case probably portends the end of society as we know it. A quick search for perhaps the most obviously offensive racial slur shows that there has been precisely one application to register a mark including the “N-word” since the Supreme Court’s decision, and that application was filed on the very day the decision came down. It may be that business owners recognize that most people are not lining up to buy products bearing that term.

There does seem to be a greater enthusiasm for marks that would potentially have been refused registration as immoral or scandalous. A search for marks incorporating what I will delicately call “the F-word” shows 34 pending applications filed after the Tam decision, about half of them based on a claim of actual use of the term as a mark. (An interesting tidbit in that regard is that about a week after the oral argument at which Mr. Brunetti was claiming that FUCT was a coined term and an acronym, he had filed an application to register the standard F-word for use with clothing. It is not clear what that is an acronym for.) The standard “S-word” is even more popular, with 42 applications. It strikes me as unlikely that any of these will prove to be great trademarks, and most probably never will be registered for other reasons. But who knows – “S-word” happens.

I will leave you with a small gallery of specimens of use for a few of these applications, including the specimen showing Mr. Brunetti’s use of his mark.

Specimen of Use for App. No. 85310960









Specimen of Use for App. No. 87531881







Specimen of Use for App. No. 87557441







 Specimen of Use for App. No. 87497654

Issue Preclusion and Likelihood of Confusion

Posted in Infringement, Trademarks

Less than three years ago, the United States Supreme Court issued its decision in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015), holding that so long as other ordinary elements of issue preclusion are met, when the usages adjudicated by the Trademark Trial and Appeal Board are materially the same as those before the district court, issue preclusion should apply.

As a reminder, the elements of issue preclusion are (1) that the issues in both proceedings are identical, (2) the issue in the earlier proceeding was fully litigated and decided, (3) there was a full and fair opportunity for litigation in the prior proceeding, and (4) the issue decided was necessary to support a valid and final judgment on the merits. When all elements are present, the earlier decision of the issue precludes re-litigation of it in the later proceeding.

B&B Hardware surprised trademark practitioners who had not contemplated that a TTAB case would be the basis for issue preclusion in an infringement action brought in district court. But they received some reassurance. In her concurrence, Justice Ginsburg explained that she joined the Court’s majority opinion with the understanding that issue preclusion would rarely apply because most TTAB decisions are based on a comparison of marks in the abstract. (By contrast, courts hearing infringement suits consider the marks in the context of the marketplace.)

Two of those rare cases occurred this year.

First, in Buzz Seating, Inc. v. Encore Seating, Inc., 2017 U.S. Dist. LEXIS 93002, (S.D. Ohio June 16, 2017) Buzz sued Encore, alleging that the latter’s use of FLITE with executive chairs infringes the former’s mark FLITE for use with office chairs. This suit was filed after Buzz Seating had prevailed before the TTAB in opposing registration of Encore’s application on the ground of likelihood of confusion. Buzz Seating obtained registration of FLITE for side chairs upon conclusion of the TTAB proceeding. When Buzz Seating sued for infringement, Encore Seating counterclaimed for declaratory judgment of non-infringement. Buzz Seating moved to dismiss that counterclaim on the ground of issue preclusion because of the TTAB’s decision. Encore argued there was no issue preclusion because the TTAB decision had focused on the category of goods recited in its application, whereas it was asking the court to focus on the goods actually sold. But the court did not see a material difference between the ‘office furniture, including chairs’ at issue in the TTAB proceeding and the ‘executive chairs’ it was asked to consider. Therefore, it gave preclusive effect to the TTAB decision and dismissed Encore’s counterclaim for declaratory judgment of non-infringement.

A more recent decision occurred in Cesari S.R.L. v. Peju Province Winery L.P. et al, 1:17-cv-00873 (SDNY Dec 11, 2017). Here, Cesari sued Peju Province (and co-defendants) for infringement when Peju Province continued using its mark for thirteen years after Cesari had successfully opposed registration of it before the TTAB. Before the TTAB, Cesari had opposed registration of Peju Province’s applied-for mark, LIANA, for wine on the ground of likelihood of confusion with Cesari’s mark, LIANO, which registered for use with wines just over a month before Peju Province had filed its intent-to-use application. In court, Cesari moved for partial summary judgment, seeking to preclude Peju Province and its co-defendants from re-litigating the likelihood of confusion issue decided by the TTAB. Peju Province argued that its marketplace usage differed from the description of goods in the application considered by the TTAB because it was a narrower subset (eg, wines from particular types of grapes, sold through certain trade channels, etc.). The court disagreed and found issue preclusion with respect to Peju Province, though it denied the motion with respect to the co-defendants. The court noted that because Peju Province had not offered evidence that its mark was used with respect to goods other than wines, there was no ‘usage’ that the TTAB had not considered.

These cases are worth noting because they are examples of courts applying B&B Hardware to the issue of likelihood of confusion (as opposed to a narrower issue or a factor of the likelihood of confusion analysis). In both cases, the court gave great weight to the fact that the goods at issue were identical to (or not materially different from) those at issue in the TTAB decision. As more time passes and more cases involving the actual (or potential) application of B&B Hardware arise, we will see just how rarely it is applied.

Prescriptions for Pharmaceutical Marks

Posted in Trademarks

Some types of applications have a more difficult time than others proceeding to registration before the United States Patent and Trademark Office (the “PTO”). Sometimes the nature of a mark (such as product packaging) requires more evidence to demonstrate eligibility for registration. But sometimes the industry or goods with which the mark is used present a special challenge for the application. For example, marks chosen for use with heavily-regulated goods or services like pharmaceutical products may face unique challenges that require extra planning and strategy. Here we will talk about just one factor that makes the road to trademark registration more difficult for pharmaceutical products than for more other products: time.

Pharmaceutical products undergo review by the Food and Drug Administration (the “FDA”). This review can take a very long time, much longer than takes to examine a trademark application. What is a trademark applicant to do if the PTO completes its examination of the application and/or requires proof of use of the mark in commerce before the FDA completes its review of the product? There are some things the trademark applicant can do to buy itself more time in the trademark application process.

At the outset, the trademark applicant could consider filing an application in a jurisdiction outside the U.S. that is party to the Paris Convention or a similar treaty. This way, the applicant can delay filing the application in the US for up to six months and still rely on the foreign application’s filing date for priority in the U.S. This can potentially extend the period of time between the applicant’s selection of a mark and the date it will have to prove use by up to six months.

When filing the application with the PTO, the applicant will usually file on an intent-to-use basis since it has not already used the mark in commerce. (And if it is able to file the application to register the mark on the basis of foreign registration, it should consider adding that basis as well.) Once the application has been filed with the PTO, it will usually take approximately three months for the application to be assigned to an examining attorney for review. If the examining attorney raises any substantive issues or formalities, the applicant will have up to six months to respond to the office action. Once the applicant satisfactorily addresses any substantive concerns or formalities raised by the examining attorney, the application will be published. If no third party opposes registration of the mark after publication, the PTO will issue a notice of allowance giving the applicant six months to prove use of its mark in commerce.

At this point, the applicant may be in a position to prove use even if the FDA has not approved the product for the marketplace if the applicant has already begun clinical trials (depending on whether and how the mark is used in such clinical trials). But if the applicant’s product has not reached the clinical trial stage, or if the applicant cannot satisfy the criteria to prove use, the applicant may seek a six-month extension of time. The applicant may seek up to five such extensions if necessary.

If the applicant was able to file its application on both an intent-to-use basis and foreign registration basis, the applicant may have some advantages. If the application includes a foreign registration basis, and the applicant has exhausted the available extensions of time to prove use, the applicant may choose to drop the intent-to-use basis upon expiration of the last extension period. This would allow the application to proceed to registration without first having to prove use. If the application is not eligible for registration in the US on the basis of a foreign registration, then it will need to start the application process over again (and should think about the potential for this eventuality well before the application reaches this stage to decide whether to take alternative precautionary measures, including filing a new application).

If the mark proceeds to registration on the foreign registration basis, the registrant will have to prove use of the mark in commerce between the fifth and sixth anniversaries of the registration date. It is possible that third parties could challenge the registration on abandonment grounds before that deadline if the mark has not been used since registration (and such challenges would benefit from a presumption of abandonment if the mark has not been used for three or more years following registration). But if the registrant can demonstrate that its product is still progressing in the FDA review process, that it has documented plans for using the mark, and that but for the absence of FDA approval the mark would be in use, it may be able to defend against an allegation of abandonment successfully.

In short, while the length of time it takes to obtain FDA approval may pose an extra burden on applicants seeking to register marks for use with pharmaceutical products, applicants can implement strategies to overcome this obstacle, including (1) filing applications abroad first and taking advantage of the 6-month period during which the applicant may file in the US and claim priority back to the filing date of the foreign application, (2) filing on an intent-to-use basis (as well as foreign registration basis, if that is available), (3) maximizing the number of extensions available to prove use, and (5) dropping the intent-to-use basis to obtain registration based on the foreign registration alone (if that is available to applicant). Throughout the trademark application process, the applicant should regularly consult with the trademark attorney to keep her apprised of the status of the FDA’s review of the product. Together, the applicant and attorney can periodically assess whether FDA approval is likely to take so long that it is worth starting over with a new application.

Going Bananas for Halloween – Costume Wars

Posted in Trademarks

Are you a Halloweenie? If you are, you value all things Halloween on this spooky day filled with tricks, treats, and… you guessed it – costumes. The National Retail Federation estimates that Americans will spend over $9 billion this year, with about $3.4 billion attributable to costumes. Costumes are big business.

The banana costume is at the center of a short-lived lawsuit filed in New Jersey federal court by Silvertop Associates DBA Rasta Imposta, against Kmart and its parent company Sears. The case is Silvertop Associates Inc d/b/a Rasta Imposta v Kmart Corp et al, U.S. District Court for the District of New Jersey, Case No. 17-07499. It was filed on September 27 but then voluntarily dismissed by Rasta Imposta just a few weeks later. The judge entered the dismissal order on October 17, 2017, after the parties settled. While we won’t get to battle for top banana, the allegations are interesting.

Rasta Imposta’s complaint alleges that its banana costume is “one of the company’s most important costumes” sold through several retailers. Kmart had purchased Rasta Imposta’s banana costumes for several years, but the relationship spoiled, leading Kmart to pick its bananas from a different tree. For the 2017 Halloween season, Kmart sourced its banana costume from a different supplier, which drove Rasta Imposta bananas.

The complaint alleges that the Kmart banana costume is a knockoff design and constitutes copyright infringement, unfair competition, and trade dress infringement. Copyrights are a sister form of protection to trademarks and protect the content of a work of authorship like books, software, and artistic designs and sculptures. Trademarks, on the other hand, are source identifiers. “Trade Dress” is a form of trademark protection that seeks to protect the look of the product itself or the packaging of the product rather than what the brand name by which the product is called. For example, Coca-Cola claims trade dress protection for the iconic design of its glass Coke bottle. The images below demonstrate the Coke® bottle design shown in line drawing form that appears on the trademark registration certificate (left) opposite an image of the finished product (right):

The dueling banana costumes of both parties as shown in the Complaint look like this:

Amid publicity over the lawsuit and peak costume-buying season, the lawsuit settled. The details of settlement have not been released, but CNBC reports that Rasta Imposta is going to continuing selling to Kmart in the future.

Rasta Imposta owns a federal copyright registration for its banana costume. The copyright would not prevent others from making their own banana costume because copyrights only protect a particular expression of an idea rather than the idea itself. Its claim of trade dress rights, however, is not supported by a registration. If Rasta Imposta can prove it owns trade dress rights to the banana design, it would be protected from similar designs that are likely to cause consumer confusion. But, this banana battle settled early, so we won’t get to see whether Rasta Imposta can peel away competitive banana designs.

It is worth noting that when considering how to best protect your company assets, you should consider both copyright and trademarks. The two together may be used as a 1-2 punch combination if you have to enforce. Logos and other artistic drawings may qualify for copyright protection in addition to trademark protection, so think about both paths.


Posted in Trademarks

In the spirit of Halloween, this post will be about the ghostly subject of phantom marks.

Generally, a trademark application filed in the United States may seek registration of only one mark. This is not always the case in other countries. For example, in the United Kingdom, Australia, and Hong Kong, it is possible for a single trademark application to cover a series of marks if they are sufficiently similar and meet certain criteria.

In the United States, federal trademark applications may cover only a single mark for policy reasons. First, the application must provide sufficient constructive notice to third parties about the nature of the mark. Second, the application must turn up in response to a thorough and effective search.

When an application is filed seeking to register a mark with a component that is subject to change the United States Patent and Trademark Office (the “PTO”) must decide whether the variable element covers so many different combinations that the policies mentioned above would be undermined. If so, the PTO will refuse to register it as a phantom mark.

However, the PTO may register marks that have variable or changeable elements so long as the changeable element can only yield a limited in the number of possible variations of the mark, the drawing provides adequate notice to third parties, and the drawing permits adequate searching. For example, noting that an element of the mark must be a contrasting color, an area code, or a year might be sufficiently limited to allow someone conducting a search to encounter the application and analyze the drawing.

Eerily, I mean, earlier this year, the PTO refused registration of two applications seeking registration of phantom marks. In re Construction Research & Technology GmbH, 122 USPQ2d 1583 (TTAB May 17, 2017)(precedential). One sought registration of the mark NP— and the other sought registration of the mark SL—, both for sealant compounds for joints. The applications noted that the dashes in the drawings were intended to represent one or more different alphanumeric characters or other symbols. Below are specimens filed with the applications that allow one to see how the marks are used in commerce:






As filed, the applications could cover over one thousand marks. Moreover, it was not clear not clear what significance the numbers would have. This is gave the public inadequate notice of the extent of protection afforded the marks and would not permit adequate searching. Accordingly, the PTO refused registration for both applications.

Don’t let the specter of phantom marks spook you this Halloween season. Rather, work with your trademark attorney to determine whether you can file an application to seek registration of a single mark with limited variable elements, or will need to file a separate application for each variation.


Nike Plays Defense Against Gronkowski

Posted in Trademarks

In April 2016, Gronk Nation LLC filed two applications for registration of himself in silhouette form spiking a football. Gronk’s “trademark move” is the Gronk spike, so it is no wonder that the logo he is seeking to protect looks like this:

One of the applications was for use in connection with clothing and the other application for use in connection with exercise equipment. Even though Gronk sports a Nike jersey every Sunday and is one of the brand’s endorsers, Nike took issue with the application. Nike filed a Notice of Opposition with the Trademark Trial & Appeal Board, arguing that the Gronk logo is likely to create consumer confusion with the Air Jordan logo, as well as cause dilution of the arguably famous mark. Nike owns multiple registrations for the “Jumpman” logo for use in connection with clothing, basketballs, and sports bags:

Gronk had until September 27, 2017 to respond to Nike’s Notice of Opposition, but failed to do so. The TTAB entered a Notice of Default in this matter on October 6, 2017. It looks like this one may have been settled of the field.

Velcro Gets Creative in Protecting Its Brand from Generic Use

Posted in Trademarks

On August 28, I posted about a case involving the question whether “google” is a generic term for providing a search engine.

Now the good folks at Velcro Companies are fighting the same battle, but they’re trying to attack the problem without litigation about whether the name of their product is generic –  or possibly to provide ammunition in the event of litigation.

Yes, VELCRO is a brand, and a registered trademark.  In fact, there are 23 active U.S. registrations for trademarks including the term “Velcro.”  The oldest of those was issued in 1958 and covered goods described as a “notion-namely, a synthetic material sold in ribbon, sheet, or piece goods form, said material having complemental parts which adhere to each other when pressed together and adapted for use as a closure, fastener, or button for closing garments, curtains, or the like.” A 1975 registration uses terms that sound a little more familiar: “separable fasteners-namely, hook and loop-type fasteners and components thereof.”

The mark is also registered in a graphic form, which looks like this, which also covers “separable fasteners, namely, hook and loop-type fasteners and components thereof” and other things that sound very similar:

The trouble is, some benighted people might be out there referring to hook and loop-type fasteners made by other companies as “velcro.”  You might have done that yourself.

The normal response to this situation is for the owner of the mark to take action to remind the public that VELCRO is a brand, not a generic term, and that the generic term for this stuff is “hook and loop,” so please, please, please don’t use our brand name generically.  It works best if your campaign is one that people might like well enough to pay attention to rather than just turn past.  Velcro Companies has done that with a new campaign: “Don’t Say Velcro.”

The crown jewel of the campaign is a highly-produced video featuring people purportedly from the Velcro Companies’ legal team, singing and dancing while instructing you, with bleeped profanity, on the proper use of their mark.  In fact, some of the cast are Velcro Companies’ lawyers, but there are quite a few ringers in there, too.  You can watch the video here, and I encourage you to do so:

Velcro Companies also has a couple of registrations for a mark that at least suggests that consumers should watch for “real” VELCRO-brand products (below), but those aren’t nearly as good as a viral video.

If you like the video, there’s even a “behind the scenes” video here:

Promoter of Pugilist Products Fails to Prove Priority

Posted in Brands, Trademarks

In a case of first impression, the Trademark Trial and Appeal Board (the “TTAB”) decided that a licensee, even an exclusive licensee who has been appointed by the licensor as its representative for protecting intellectual property rights, cannot assert her licensor’s purported priority rights to prevail in a claim of likelihood of confusion. Moreno v. Pro Boxing Supplies, Inc., Opp. Nos. 91214580 and 91214877, Can. No. 92058878 (TTAB Sept. 8, 2017) [precedential]. Grab a ringside seat as we go through the blow-by-blow!

In one corner, we have Pro Boxing, Inc. who owns a registration for the mark CASANOVA for use with sporting equipment and trainer’s supplies, boxing equipment, and protective boxing gear with a claimed first use date at least as early as 1993. Pro Boxing, Inc. also owns the applications to register the marks for use with athletic, sports, and boxing equipment based on a claimed first use date of 2003.

In the other corner is Ms. Julie Moreno, who, since 2013, has been the exclusive licensee in the U.S. of the intellectual property rights of Deportes Casanova, a Mexican sole proprietorship that owns a registration for the mark in Mexico. Ms. Moreno sells boxing equipment manufactured by Deportes Casanova via the internet. The license agreement appoints her Deportes’ representative for protecting its intellectual property rights in the United States.

As the parties squared off, Ms. Moreno hit Pro Boxing, Inc. with a one-two punch when she opposed registration of Pro Boxing Inc.’s applications and petitioned to cancel its registration on the grounds of likelihood of confusion. She claimed priority based on common law use of the marks by Deportes Casanova in the United States, which she alleged dated back to at least as early as 1972. Ms. Moreno’s status as a licensee of Deportes Casanova afforded her standing in the consolidated proceedings. But she found herself on the ropes when it came to establishing priority.

Though the license agreement appoints Ms. Moreno as Deportes’ representative for enforcing its intellectual property rights in the United States, she led with her chin by not joining Deportes as an opposer/petitioner in the action. To pursue her likelihood of confusion claim, Ms. Moreno claimed priority based on Deportes’ purported common law rights. But until now, the TTAB has never had occasion to decide whether a licensee could establish priority by relying on the licensor’s use of the licensed mark.

The TTAB observed that a licensee’s use of a mark inures to the licensor’s benefit, but there is no authority for the assertion that a licensor’s use inures to the licensee’s benefit. Furthermore, the license agreement that governed the relationship between Ms. Moreno and Deportes specifically refrained from transferring any ownership rights to her so it could not be construed as tantamount to an assignment. Therefore, the clause in the license agreement appointing Ms. Moreno as its representative for protecting Deportes’ intellectual property in the U.S. could only be construed to extend to her use of it (and not to include Deportes’ use of it at any time). In light of the foregoing, the TTAB concluded that Ms. Moreno had failed to prove priority, so it dismissed the oppositions and denied the petition to cancel.

Ms. Moreno may be down for the count after this decision, but she may not want to throw in the towel. If she could persuade Deportes to toss its hat into the ring to bring a new proceeding, it may have better luck proving priority in another bout.



Posted in Brands, Trademarks

Cheerios® may have a trademark registration for the slogan The One and Only®, but the Trademark Trial and Appeal Board shot down its attempt to register the color yellow for its box, finding that it was not the one and only cereal with a yellow box. Cheerios have been a staple on the American family’s kitchen table for decades. In case you forgot what the box looks like, it has a primarily yellow background as shown below.

General Mills sought to register just the color yellow appearing predominantly on packaging for its “O” or “toroidal-shaped” oat-based breakfast cereal.

Individual colors are capable of serving as trademarks and may be registered. Colors, however, have to be associated substantially exclusively with the applicant and must have been used so prevalently that they have acquired secondary meaning. This “secondary meaning” is a legal threshold that means that consumers associate the specific color with a specific good or service. Some of the few successful single color trademarks include UPS’s use of the color brown, the Nexium purple pill, and Tiffany’s use of the robin egg blue on its jewelry boxes and bags.

General Mills’ application was refused registration largely based on the fact that several other breakfast cereals, including some that are oat based and/or “O” shaped also use the color yellow, which is cheerful and thought to promotes the production of serotonin and happiness. Just a few cited in the Board’s decision include:


Even though General Mills was trying to limit its registration to “O” shaped oat cereal, the Board found that there was so many other products using yellow as the primary color of the cereal packaging that they could not hold that the public associated the single color yellow with Cheerios alone.

Here is a look back at the Cheerios commercial from around 1952, which apropos for today was in black and white without color:

Is “Google” generic? If only there were a way to search for the answer on the internet!

Posted in Brands, Trademarks

You know you’ve been successful when the name of your product is so prominent that the public uses it to refer to that whole class of product.  When that happens, there’s good news and bad news.  The good part is that your product must be dominating its field.  The bad part is that you may forfeit your trademark rights in your product’s name.  Google is now dealing with a claim that the word “google” has reached that point and is available for everyone to use.

A word that is the name of a type of product is the generic term for that type of product.  Generic terms get no trademark protection.  When the public generally uses the name of a specific product as a generic term, it becomes a case of “genericide” – a killing of the trademark by becoming generic.

The situation is not common, but it happens.  A number of common words began as trademarks but passed over into unprotectable generic terms.  Aspirin, for one.  And escalator.  And cellophaneDry iceThermos.  Trampoline.  For some of those, there are other words we could use for the product, but it’s easy to see why we prefer to call it “aspirin” rather than “acetylsalicylic acid.”  For others, the term is so ingrained that it’s hard to think of what else we would call the product: what’s the alternative to “trampoline”?

By 14 Mostafa&zeyad (Own work) [CC BY-SA 4.0 (], via Wikimedia Commons

For obvious reasons, owners of dominant trademarks are not keen to have their marks cross over the line to become generic terms.  When that happens, their formerly valuable mark, which only they were allowed to use on their product, becomes fair game for everybody to use.  That is why the owners of dominant marks often make efforts to “police” use of their marks, or at least to remind the public that it’s a trademark, not a generic term.  We used to see ads every so often reminding us that “Xerox” was a trademark, so you could ask someone to “make a photocopy” of a document, but you shouldn’t ask them to “xerox” it.  (The growth of major competitors to Xerox probably alleviated that problem.)  Other product names that have fought this battle include “Kleenex,” “Clorox,” “Gore-Tex” and “BoTox.”

Which brings us to Google.  On August 14, 2017, David Elliott and Chris Gillespie filed papers asking the Supreme Court to consider whether the term “Google” has become generic.  The dispute arose when Elliott and Gillespie (who I’ll call E&G) registered over 700 domain names including the word “google” plus names of companies, products, people, places, etc. – such as “” and “”  Google objected and won, and E&G countered by trying to get Google’s registrations for the GOOGLE trademark cancelled on the ground that it is a generic term.

Their argument in Arizona federal court was that, because people use “google” as a verb meaning “to perform an internet search,” the mark has become generic.  Google’s response was that even if people use the term generically as a verb, that doesn’t mean that it is generic for search engines.  The federal trademark law allows a registration to be cancelled when the mark “becomes the generic name for the goods or services . . . for which it is registered,” but as Google pointed out, its registrations cover “computer hardware; computer software for creating indexes of information, indexes of web sites and indexes of other information resources” and other, longer descriptions – but the point is that the registrations cover providing a search engine, not the act of searching the internet.  Because all of E&G’s evidence went to use as a verb rather than use as the name of the goods and services Google’s mark is registered for, Google argued that the evidence didn’t prove anything about the real question in the case.  The district court in Arizona agreed and dismissed the case, and the Court of Appeals for the Ninth Circuit affirmed the dismissal.  (See here and here.)

So now E&G are taking their last shot by filing a petition for writ of certiorari at the U.S. Supreme Court.  It will be a while before we know anything about whether the Court will take the case.  The Court denies most petitions without even requesting a response from the other party.  If the Court is at least somewhat interested it will ask Google to file a response, and then determine whether to take the case.  Even if the Court decides to hear the case, that’s no guarantee that E&G would win.  There’s a long way to go before we ditch the term “search engine” and start referring to Bing as a “google.”