By Richard Stobbe

“Patent exhaustion” is something we’ve reviewed before. To recycle an old line, the term “patent exhaustion” does not refer to the feeling you get when a patent agent talks for 3 hours about the process of a patentee traversing a rejection in reexamination proceedings.

Nope, this is the patent law concept that the first authorized, unrestricted sale of a patented item ends, or “exhausts,” the patent-holder’s right to ongoing control of that item, leaving the buyer free to use or resell the patented item without restriction. For example, if you buy a patented widget from the patent owner, you can resell that widget to your neighbour without fear of infringing the patent.

What if the widget is sold by the U.S. patent holder in Canada? Does this exhaust the patent rights in the U.S.?

The US Supreme Court has recently confirmed that when the holder of a U.S. patent sells an item in an unrestricted sale, the patent holder does not retain patent rights in that product, even where that sale takes place outside the US. Thus, an authorized sale of the patented article in Canada by the U.S. patent holder would trigger exhaustion of the U.S. patent rights. The U.S. Supreme Court has confirmed that “An authorized sale outside the United States, just as one within the United States, exhausts all rights under the [U.S.] Patent Act.”

See: IMPRESSION PRODUCTS, INC. v. LEXMARK INTERNATIONAL, INC. (Decided May 30, 2017)

Calgary -07:00 MST

By Richard Stobbe

Is Google a brand or just a word meaning “conduct an online search”?

A trademark can suffer “genericide” when it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous with a product or service. In a very interesting decision from the US Ninth Circuit Court Court of Appeals in Elliott and Gillespie v. Google Inc. , the trademark GOOGLE was challenged on this basis: that it had become a word describing “searching on the internet” in a general sense, rather than a being distinctive of search services provided through the GOOGLE-brand search engine.

The court had a good description of “genericide”: “Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, ASPIRIN, CELLOPHANE, and THERMOS were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods. But the public appropriated those marks and now primarily understands aspirin, cellophane, and thermos as generic names for those same goods.”

This case arose due to an underlying domain name complaint. Google asserted its trademark rights against Elliott and Gillespie based on their registration of hundreds of domain names that included the word “google”; for example, “googledisney.com,” “googlebarackobama. net,” and “googlenewtvs.com.”  Elliott and Gillespie fought back because hey, if you’re going to fight back, why not take on Google? They petitioned to cancel the trademark registrations for GOOGLE, which would in turn eliminate the basis for Google’s domain name complaint.

Elliott and Gillespie argued the “indisputable fact that a majority of the relevant public uses the word ‘google’ as a verb—i.e., by saying ‘I googled it,’ and … verb use constitutes generic use.”

The court reviewed the history of genericide under trademark law and applied a test of whether the relevant public understands a mark as describing where a product comes from, or what a product is.  Put another way, if a word still describes where the product comes from, then the term is still valid as a trademark.  But if consuming public understands the word to have become the product itself (and not the producer of the product), then the mark slips into being a generic term. Escalator is another example. It became synonymous with a moving staircase product, rather than distinctive of the Otis Elevator Company as the producer of that product.

In Google’s case, the court  asserted that verb use (the use of the mark as a verb instead of an adjective) does not automatically result in a finding of genericness. The court also noted that a claim of genericide must relate to a particular type of product or service. “In order to show that there is no efficient alternative for the word “google” as a generic term,” the court argued, “Elliott must show that there is no way to describe ‘internet search engines’ without calling them ‘googles.’ Because not a single competitor calls its search engine ‘a google,’ and because members of the consuming public recognize and refer to different ‘internet search engines,’ Elliott has not shown that there is no available substitute for the word ‘google’ as a generic term.”

Compare this to the case of Q-TIPS which concluded that “medical swab” and “cotton-tipped applicator” are efficient alternatives for the brand Q-TIPS, whereas a US case involving the ASPIRIN mark concluded that, at the time, there was no efficient substitute for the term “aspirin” because consumers did not know the term “acetylsalicylic acid”, so they used “aspirin” in a generic sense.  Interestingly, the brand ASPIRIN remains a registered mark in Canada, although Bayer lost its trademark rights to genericide in the US.

Google survived the genericide test this time. To keep track of future attempts to challenge Google’s trademark rights, please conduct an internet search using a GOOGLE^® brand search engine.

Calgary – 07:00 MST