Get to the Point!

You Can Conduct an Internet Search, But Should You Google?

By | Oct.03.17 | Communicating, Daily Dispatch, Get to the Point, Legal Writing

Get to the Point

I once defended a product liability case where the client was adamant that the product always be called a “personal watercraft.” It most definitely was not, he insisted, a Jet-Ski. The issue was the use of a trademark to refer to a similar product.

What’s the Risk?

Back in law school, you may have learned trademark holders must vigilantly monitor references to their brand to avoid the term becoming a generic. That’s what happened to “aspirin,” “escalator” and “videotape,” which can now be sold under any brand name in the U.S. A company’s investment in brand recognition can be wiped out if the brand can legally be used to refer to any similar product. No surprise, companies don’t like that.

Xerox Corporation is famous for sending cease-and-desist letters when someone’s reference to “xeroxing” instead of “photocopying” is in the public eye. Passing off one’s product as a branded one can lead to expensive legal liability. Xerox regularly runs ads explaining that while you can copy on a Xerox photocopier, you cannot “xerox.” Yet, several dictionaries define the word as a generic term meaning to print or reproduce by xerography. It can be confusing.

But I Google All the Time

When a brand becomes a commonly used verb, the trademark owner risks a court declaring the trademark has been genericized; it is no longer protected intellectual property. On May 16, 2017, the Ninth Circuit Court of Appeals ruled that verbification of the word “google” did not automatically constitute generic use. Google, Inc.’s successful marketing was not genericide.

What’s the Legal Writing Lesson?

While intellectual property attorneys are surely hip to this issue, the rest of us may have become a bit careless. Pay attention to your use of trademarked brand names in legal writing, particularly in court documents subject to public examination. Don’t use a trademarked name to refer to any other company’s product or to the general class of that type of product.

IP lawyers will advise that when you refer to a trademarked item, the best practice is to include the R in a circle mark (®), preferably as superscript, to show the term is trademarked. Kleenex is insistent that every reference to its product include the registration mark. But your organization may have a style guide that shuns the symbol within text. The Associated Press does not use the symbol in its news copy; their rule is simply to capitalize a brand name, and so should you. You haven’t broken any law just by omitting the symbol.

Generic or Trademarked? You Can Search the Internet

It’s not always easy to learn if a term is trademarked. A search for “Is [fill in the blank] trademarked?” may be your quickest path. Surprisingly, a simple search for the product name may not be definitive.

Let’s say you are drafting your tort complaint, and you are not sure if Botox is a trademarked brand or a generic term for botulinum toxin. A search result shows that the official website includes the registered trademark symbol, though other websites in the search results queue do not. On the other hand, Rollerblade is not so consistent. You have to click through to their website to find the registration symbol. The website for Fitbit exercise trackers doesn’t show the registration symbol at all. The tab in my browser shows a registration mark for Botox, but not for Rollerblade or Fitbit.

You can check the U.S. Patent and Trademark Office Trademark Electronic Search System. Because many companies may have similar names, the answer to your question may not be easily discernible. Unfortunately, there is no single, easily accessible, definitive directory.

Things Can Change

For now, not every hot tub is a Jacuzzi, not every disc is a Frisbee, and not every plastic bandage is a Band-Aid. Regardless of the future of those brands, you can best protect your client and yourself by respecting those and other trademarks in your legal writing.

Theda “Teddy” Snyder mediates workers compensation cases throughout California. She is also available for legal freelance writing assignments. An attorney since 1977, she has practiced in a variety of settings and frequently speaks and writes about settlements and the business of law. She is a Fellow of the College of Law Practice Management and the author of four books published by the American Bar Association, including "Women Rainmakers' Best Marketing Tips, 3rd Edition" as well as "Personal Injury Case Evaluation" available on Amazon.com. Based in Los Angeles, Teddy can be found at WCMediator.com and on Twitter @WCMediator.

Illustration ©iStockPhoto.com

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