Trademark rights are defined by public perception. If the public identifies a particular mark with a given firm, that mark is protectable; however, if the public understands the mark to refer to a class of products, the mark is “generic” and not protectable. The status of a mark is not fixed—a mark that has trademark significance in 2014 might become generic in 2015. The loss of a mark can be a significant blow to the former owner, and it occurs frequently enough to have a name: genericide.
Consider, for example, Firefly Digital Inc v Google Inc. In 2002, Firefly started selling a website content management system “under the term ‘WEBSITE GADGET,’ and marketing and selling its add-on applications under the term ‘GADGET.’” In 2009, Firefly registered “GADGET” with the US Patent and Trademark Office (PTO), which constitutes prima facie evidence of the trademark’s validity and serves to identify Firefly. Firefly sued Google in federal court in Louisiana, alleging that Google’s use of the term “gadget” in conjunction with its iGoogle product constituted trademark infringement. Google raised a defense of genericness and, relying on a consumer survey, proved that “gadget” no longer held trademark significance. Google prevailed, and the mark was canceled.
But if a term can move from trademarked to generic status, could it also shift back to protected status? At some time, the use of “gadgets” on websites may fall into disfavor. Firefly might then want to restart its business, using a name with which it is familiar (like “gadget”). While it would be able to use the term, it might be unable to assert trademark protection in it ever again. In some courts, Firefly would be precluded from relitigating the issue of trademark significance.
The courts of appeals that have attempted to make sense of the possibility of former trademarks regaining legal protection have not reached a consensus. Some, in contrast to the Fifth Circuit, have acknowledged the possibility that a formerly generic term might assume trademark significance. However, many others have rejected all attempts at reprotection of a generic term, either through rote application of the “de facto secondary meaning doctrine” or under color of issue preclusion.
This Comment argues that terms previously adjudicated to be generic ought to be eligible for reprotection upon a showing of competent evidence. Courts should use the changedcircumstances exception to issue preclusion to avoid a procedural bar to claims that have a chance of success. Finally, to protect defendants from burdensome litigation, courts should turn to the fee-shifting provision of § 35(a) of the Lanham Act—if a party brings a suit attempting to assert a right in a term adjudicated to be generic and loses, that party has sued based on something that it does not own, and the victorious defendant should be compensated for the costs of litigation.
This Comment proceeds as follows: Part I begins with background on how a trademark is obtained. It then discusses the process of genericide. Part II outlines the division between the courts of appeals that allow for the possibility that a mark might return to protected status and those that block reprotection claims. Part III argues that formerly generic terms should be eligible for reprotection and outlines a method by which courts might discourage potentially abusive litigation.