The new generic

For years this blog has struggled with the question of whether Google (the trademark) is generic, even though it seemed very obvious way back in the day that there was nothing to struggle about.  Way back in ancient times I consigned Google to the dustbin of genericide. In 2017, however, erstwhile LOC contributor Matthew David Brozik brought us up to date in a post about the decision in David Elliot v. Google, Inc.

In other words, I was wrong. And I have since had many opportunities in my work to think more and more about what is arguably a new understanding of genericness, and regretted that I have not had to the time treat it properly here.

Fear not.  Once again, Julie Zerbo at The Fashion Law nails it so LIKELIHOOD OF CONFUSION doesn’t have to:

The fear of genericide – and the risks that come with it – is why brands’ legal teams have long counseled their clients about the need to actively educate and police the market for such generic uses. It is why, for years, Chanel periodically ran full page “ads” in Women’s Wear Daily, asking industry insiders, including journalists and critics, to stop using its name to describe non-Chanel items.

The brand did not want fashion critics, for instance, to refer to tweed jackets from other brands as “Chanel-like” or non-Chanel-manufactured quilted leather bags as “Chanel-esque.” In other words, the famed Paris-based brand did not want its name used to describe others brands’ products, since that could bring about the risk that consumers would start identifying the Chanel name with the general tweed-style jacket or any old bag quilted bearing a woven leather chain-link strap.

For a brand like Chanel, losing rights in its eponymous trademark would be a multi-billion dollar loss, since Chanel (and other similarly situated brands) is largely in the business of leveraging its name and other trademarks in exchange for consumer dollars. Hence, the efforts to avoid such generic use of its mark.

And yet, Uber is openly quite pleased that its name is being used to describe ride sharing services as a whole. Why is its stance so different from Chanel’s? Well, it is likely because it takes a more nuanced view of genericide. In fact, Uber’s stance reflects a larger shift in the understanding of the risk of genericide that has been underway for at least a decade when the New York Times published a highly-referenced article, entitled, “The Power of the Brand as Verb,” about the modern reality of the use of trademarks as something other than merely source-identifying terms.

As now-Harvard Law professor Rebecca Tushnet told the Times in 2009, “The risk of [a trademark] becoming generic is so low, and the benefits of being on the top of someone’s mind are so high,” the latter being especially true in the ever-crowded consumer marketplace.

Ms. Tushnet has since told TFL that such risk is low “because the key to genericity is whether people understand that there is a brand name [at play, as well as] an underlying thing.” For instance, she states, “Even with nouns, courts today are pretty conscious of the fact that a consumer can say ‘hand me a kleenex’ and mean a tissue, and at the same time, understand that Kleenex is a brand name for a type of tissue.”

This “more nuanced view of genericide” makes sense.  It is no longer the case that the appearance of your brand in the dictionary spells its doom as a protectable trademark. Indeed, as comedian Myq Kaplan observes shrewdly, the fact that your brand is never — that is, never in the real world — used generically in the way the category-creating one is is a pretty good reminder of who’s still the boss. 

What changed?  Ms. Zerbo says this:

Brands now – more than ever before, thanks to the web and social media – have a voice, which can potentially reach hundreds of millions of consumers for little to no cost at all and in barely any time. Moreover, traditional one-way corporate communication is largely dead for consumer goods brands, which have been forced to not only communicate to consumers but to converse with them. This could mean that in many cases, the consumer-brand relationship is stronger in the digital era, giving rise to a heightened understanding amongst consumers that in instances of Google, or Uber, or Chanel, there is the brand and then there is the goods/services that it produces.

Got it. All we need now is for the courts to get it too.

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