trademarkBy Jillian Beatty, a 2017 Judge K.K. Legett Fellow at Washington Legal Foundation who will be entering her third year at Texas Tech University School of Law in the fall.

Suppose you just bought a house. In the first few years as a home-owner, you revamp the backyard, remodel the master bathroom, and decorate in that mid-century modern style you had always loved. You have done a little maintenance on the pipes and replaced the garbage disposal in the kitchen, all costing you a pretty penny. But that’s ok. This is an investment. Then, just as your home is reaching its pinnacle, as the calls from Better Homes and Gardens and Architectural Digest start pouring in, a man knocks on the door and asks for the keys and the deed. You have done too good of a job maintaining this home and now you are going to lose it. You will receive no compensation.

Trademark owners spend a great deal of time and money trying to get consumers to associate their mark with a quality product and they incur a lot of this cost up front. Businesses hope that the more maintenance they put into their marks in the form of advertisements, the more customers will recognize its product. Trademark maintenance can be a big expenditure, but, like your house, it’s a long-term investment and a mark owner is willing to incur the expense to be a formidable market competitor. Unlike your house, however, investment in a trademark may be all for naught if the mark is found later to be “generic.”

At its most basic level, trademark law operates as a means of source identification. When a trademark ceases to identify the source of a product and instead identifies the genus of the goods or services provided, it becomes generic. This process is known as genericide. For example, Thermos was originally a trademarked name for a specific brand of insulated flask, but became generic because it came to describe insulated flasks in general; when consumers said Thermos, they meant an insulated flask regardless of the source. Genericide causes substantial problems for companies that spend millions of dollars to establish relationships with customers. Mark owners often go to great pains to ensure that the relationship is not too good, reminding their customers that their trademark is a brand. Problems have also surfaced around cybersquatters who, similar to their patent troll counterparts, buy domain names with the intent of extorting money from trademark owners who want their domain name to match their trademark. The Anticybersquatting Consumer Protection Act (ACPA) has largely outlawed this kind of after-market trafficking of internet domains.

In Elliot v. Google, Inc. , decided last month, the US Court of Appeals for the Ninth Circuit affirmed the decision of the district court and granted summary judgment in favor of Google, finding that evidence of consumers using google as a verb (“google it”) did not render the mark generic per se. The plaintiff-cybersquatter had previously acquired 763 domain names, all of which paired Google’s trademark with other popularly searched words. After Google filed a successful complaint in the National Arbitration Forum, the body given initial jurisdiction over cybersquatting claims, the plaintiff-cybersquatter brought suit in federal court to cancel Google’s trademark. The cybersquatter had alleged that the consuming public used Google’s trademark as a verb to refer generally to all internet search engines, rendering the trademark generic.

The court held that the use of a trademark as a verb “tells us nothing about how the public primarily understands the word itself.” Elliot, slip op. at 14. If the consumer uses the trademark to refer to Google, he or she is using the trademark to identify the source of the service and there is no genericide issue. If the public uses the trademark to refer to internet search engines generally, however, an issue of genericness may arise because the consumer is using the trademark to refer to a type of service, not the specific source of the service. The plaintiff argued that Google’s trademark had become generic because of the public’s frequent use of the verb “to google,” but provided no evidence that consumers were referring to search engines generally and not Google itself. In this case, the court used the primary significance test, asking whether the primary significance in the mind of the consumer is the source of the product or a particular type of product regardless of its source.

Google has not joined the trademark graveyard that has claimed Kerosene, Escalator, and Aspirin. And it shouldn’t. The purpose of genericide is to promote fair competition in the marketplace—if a competitor needs to use a mark to compete fairly or a patented product that recently fell into the public domain was known to consumers only by its trademark, the mark becomes generic to foster competition. The court rightfully recognized the heavy weight that must be given to a company’s ownership of intellectual property. Businesses should be incentivized to create quality products not only to foster competition, but because it creates a healthy environment for the consumer.

If genericide further penetrates the corporate world, businesses will have less incentive to build brand-recognition: what was once a worthy investment begins to look much more like a gamble. Without adequate respect for property rights, trademark jurisprudence that provides protection to the consumer will be rendered useless because companies will see no reason to invest in their marks. If companies expend the kind of money necessary to create a nationally or internationally recognized brand, they will want strong assurances that their property will be protected, the same way you would want to be assured your investment as a home owner would not be pulled out from under you. The court’s decision in Elliott v. Google, Inc. provided some of those assurances by rejecting the plaintiff’s “verb usage” argument, thereby fostering a better environment for businesses and consumers alike.