Trademarks – Greatness to Genericide
Trademarks of generic terms – from Booking.com to Linoleum
Some of the finer points of trademark law had their moment in the spotlight recently, as the case of the US Patent and Trademark Office vs Booking.com came before the US Supreme Court. However, wider interest was generated because, for the first time in the history of the Supreme Court of the United States of America, the proceedings were relayed live to the outside world.
The inability to convene at court due to COVID-19 restrictions meant the hearing was held via videoconference and it was also broadcast simultaneously, much to the intrigue of onlookers. The proceedings went relatively smoothly, though there were a few hiccups of the technical kind with which everyone who has been using videoconference technology lately will be familiar – forgetting to unmute microphones, missing a verbal cue – for example.
Far from being phased by the unusual set-up, commentators noted that the case even seemed to inspire Justice Thomas, whose famous reticence once hit a decade-long streak during which he declined to raise any questions. On this occasion – perhaps emboldened by the format – he asked for clarification from both parties.
The case is set to determine whether hotel reservation search engine Booking.com can register its name as a trademark. At issue is whether a generic word – in this case “Booking” – is registrable as a trademark when appended with a generic top-level domain name – .com.
The Lanham Act, the primary federal statute of trademark law in the US, holds that generic terms cannot be registered as trademarks because they refer to a general class of products or services. Permitting their registration could enable the registrant to exercise an effective monopoly on that class of goods. However, Booking.com claims that its name has acquired distinctiveness as a brand in the minds of consumers – producing a survey to support its claims – and therefore should be registrable as it is not a generic term for hotel reservation services.
More detail about this ground-breaking case and its arguments can be found here. The judges are expected to deliver their decision in some months’ time.
The curious case of genericism – from greatness to genericide
While registering generic words as trademarks may be difficult (as many of those who are currently bidding to register “coronavirus” marks are likely soon to discover), it is also possible for words that have been registered as trademarks to cease to adequately function as distinguishing the source of origin of goods and services, simply because they have become too successful and synonymous with the type of goods they represent.
The oft-cited examples are hoover (although the trademark still exists) and sellotape – both common parlance for vacuum cleaners and adhesive tape. Fear of genericism was also a concern for Google in the early stages of its success, when the company tried to avoid inclusion of the word in official dictionaries as a verb to describe internet searching.
But there are some less well-known examples where a word that has entered the lexicon was originally a trademark:
First patented by its inventor Sir Christopher Cockerell in 1955 and registered as a trademark by Isle of Wight manufacturers Saunders-Roe. Despite the official term for this type of craft being “air-cushioned vehicle”, the name hovercraft is now the generic word for what remains a quite special mode of transport.
Much-beloved by children, the trampoline was originally a trademark of Griswold-Nissen trampoline and tumbling company. Invented by George Nissen, a keen diver who almost reached the 1932 Olympics, the name is derived from the Spanish for diving board – el trampolin – and was registered as a trademark in 1937. The product became so successful, and abuse of the trademark so widespread, that Nissen let it lapse in the 1960s.
While many will associate linoleum with 1950s kitchens, the product was originally invented back in 1860 and quickly became a popular floorcovering. Its inventor, Frederick Walton, failed to register his product name as a trademark. By the time he tried to contest a competitor’s use of the name courts determined that the term had already become generic. This is widely held to be the first example of genericide.
Protecting against genericide
Part of proactively managing your trademark portfolio, especially if your product or service is proving especially popular, is guarding against genericism. This might include preventing your trademark being used as a verb, such as “to google” or “to hoover”. There have been several education campaigns over the years aimed at encouraging consumers not to genericise brand names. Notable among these is Xerox Corporation’s “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”
Being seen to defend against genericism can also stop third parties claiming as a ground for cancellation that you have not actively tried to prevent your mark becoming generic.
Ensuring that your trademark is always used correctly across all business units and pursuing infringements can also help demonstrate that you are controlling your mark against improper use. For more on avoiding genericide, check out this article from INTA.