>In a well-reasoned opinion, the 9th Circuit Court of Appeals recently held that the GOOGLE trademark has not suffered death by genericide – even if the public uses it as a verb for searching the Internet.
>The case before the court sprang from the registration of 763 domain names that incorporated the term GOOGLE. After losing a domain name dispute arbitration, the domain name owners sued to have various trademark registrations for GOOGLE cancelled, claiming that the mark had become generic for the act of searching the Internet. The court rightly observed that a claim of genericide must always relate to specific goods or services, and that use of “google” as a verb for searching the Internet was not sufficient evidence that GOOGLE had become generic for “search engine services” or any other goods or services.
>The general rule of thumb is that trademarks are best thought of as “adjectives” that modify a generic noun. But this “part of speech” approach is not determinative to whether a mark has become generic. And while for years Xerox sought to instill in the public’s mind the trademark significance of XEROX by stating that “not even Xerox can xerox,” evidently Google can google without destroying the mark.
Just a little reminder from Xerox / prepared by Needham, Harper & Steers Advertising, Inc. -- Not even Xerox can Xerox / prepared by Needham Harper Worldwide, Inc. (March 1985) -- Once a trademark, not always a trademark / [Xerox Corporation].
Though it was a long time ago, I recall that my law school Business Torts casebook contained a copy of Xerox’s old ad, “Not Even Xerox Can Xerox”, which Xerox used to promote proper use of its trademark and fight genericide. Back in the day, Xerox was by far the most well-know copier brand, leased by offices all over. In this day and age, now that most people have a copier at home (as part of a multifunction printer) and it could be a Canon, HP, Brother, Epson or other brand, I think the younger folk are not so likely to refer to copying as “Xeroxing”. It poses an interesting quandary: Xerox may be winning the genericide war but they are no longer dominating the competition. Which is preferable?
If the LEGO trademark is used at all, it should always be used as an adjective, not as a noun. For example, say "MODELS BUILT OF LEGO BRICKS". Never say "MODELS BUILT OF LEGOs". Also, the trademark should appear in the same typeface as the surrounding text and should not be isolated or set apart from the surrounding text. In other words, the trademarks should not be emphasized or highlighted. Finally, the LEGO trademark should always appear with a ® symbol each time it is used.
NOTE: June 2017 update since my previous post from September 2015: Even Google can Google after all!
https://www.lexology.com/library/detail.aspx?g=65cb8ea7-6425...
>Even GOOGLE Can Google After All
>Fish & Richardson, USA, June 8 2017
>In a well-reasoned opinion, the 9th Circuit Court of Appeals recently held that the GOOGLE trademark has not suffered death by genericide – even if the public uses it as a verb for searching the Internet.
>The case before the court sprang from the registration of 763 domain names that incorporated the term GOOGLE. After losing a domain name dispute arbitration, the domain name owners sued to have various trademark registrations for GOOGLE cancelled, claiming that the mark had become generic for the act of searching the Internet. The court rightly observed that a claim of genericide must always relate to specific goods or services, and that use of “google” as a verb for searching the Internet was not sufficient evidence that GOOGLE had become generic for “search engine services” or any other goods or services.
>The general rule of thumb is that trademarks are best thought of as “adjectives” that modify a generic noun. But this “part of speech” approach is not determinative to whether a mark has become generic. And while for years Xerox sought to instill in the public’s mind the trademark significance of XEROX by stating that “not even Xerox can xerox,” evidently Google can google without destroying the mark.
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https://news.ycombinator.com/item?id=10203317
DonHopkins on Sept 11, 2015 | parent | context | favorite | on: ‘Give Away Your Legos’ and Other Commandments for ...
Not even Xerox can Xerox. [1] [2]
Not even Lego has Legos. [3]
[1] https://beta.worldcat.org/archivegrid/collection/data/880574...
Just a little reminder from Xerox / prepared by Needham, Harper & Steers Advertising, Inc. -- Not even Xerox can Xerox / prepared by Needham Harper Worldwide, Inc. (March 1985) -- Once a trademark, not always a trademark / [Xerox Corporation].
[2] https://trademarkmusings.wordpress.com/2009/12/05/not-even-x...
Though it was a long time ago, I recall that my law school Business Torts casebook contained a copy of Xerox’s old ad, “Not Even Xerox Can Xerox”, which Xerox used to promote proper use of its trademark and fight genericide. Back in the day, Xerox was by far the most well-know copier brand, leased by offices all over. In this day and age, now that most people have a copier at home (as part of a multifunction printer) and it could be a Canon, HP, Brother, Epson or other brand, I think the younger folk are not so likely to refer to copying as “Xeroxing”. It poses an interesting quandary: Xerox may be winning the genericide war but they are no longer dominating the competition. Which is preferable?
[3] http://www.lego.com/en-us/legal/legal-notice/fair-play
Proper Use of the LEGO Trademark on a Web Site
If the LEGO trademark is used at all, it should always be used as an adjective, not as a noun. For example, say "MODELS BUILT OF LEGO BRICKS". Never say "MODELS BUILT OF LEGOs". Also, the trademark should appear in the same typeface as the surrounding text and should not be isolated or set apart from the surrounding text. In other words, the trademarks should not be emphasized or highlighted. Finally, the LEGO trademark should always appear with a ® symbol each time it is used.