Valuators identify and evaluate risk. Valuators of trademarks need to take into account the unique risk of “genericide,” the likelihood that a company has been so successful in promoting its brand that its trademark becomes a common name for a class of goods or services.
Attorneys at Lewis and Roca LLP take us into a trademark graveyard: what used to be trademarked as Zipper fasteners became zippers; what used to be Escalator machines became escalators; what used to be Aspirin medicine became aspirin. Trademarks of substantial value can become valueless. Care for a kleenex?
Keeping a trademark valuable by insulating it from genericide requires vigilance and a comprehensive plan. David Elliott doesn’t think Google has exercised that vigilance with its trademark and has sued in the District of Arizona to have the Google mark canceled. Essentially, Elliott is arguing to “google” something is not to use Google, it is to search the internet, as defined in online dictionaries.
When evaluating the risk, valuators are informed by what courts have determined demonstrates a mark has become generic: the primary significance of the mark to the relevant public has shifted to indentify the class of product or service to which the mark relates. “A plaintiff [seeking to cancel a trademark] can point to evidence from purchaser testimony; consumer surveys; listings and dictionaries, trade journals, newspapers, and other publications; generic use of the term by competitors and other persons in the trade; the trademark owner’s own generic use; and generic use in the media.”