Iraq-a-Whac-a-Mole and Generic TM's

Litigation against alleged wrongdoers online, particularly p2p web sites, has repeatedly been characterized as a game of Whac-A-Mole.  So has the war in Iraq, political campaigning, cybersquatting,  and more.  Speaking of the classic game, what is taking so long for a version of the game on the Wii?!  There is a live trademark on the term for computer and video games.  Like the other registered marks on the term, that one is owned by Bob’s Space Racers, Inc., the manufacturer of the arcade game and assignee of the "Whac-A-Mole" mark(s).  After reading another article about the RIAA's Whac-A-Mole litigation campaign against filesharing sites, I began to wonder whether it should start being referred to as a game of whac-a-mole.  In lawyer terms, I'm beginning to think that the trademark for Whac-A-Mole brand (video games, entertainment, etc.) has become generic and now serves as a reference to any evasive, repeated behavior by the same or similar entities. 

In trademark law, the Abercrombie spectrum places terms into categories based upon their strength and thus ability to distinguish a product or service's source, i.e. their distinctiveness, the main point of U.S. trademark law's use-based system.  Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4, 9 ("Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.").  A generic term is one that is not eligible for protection because it represents the genus, or entire class of product.  A mark can be generic from the start or become generic over time.  Famous examples include thermos, escalator, and zipper, all of which started out as trademarks and after years of their owners playing Whac-A-Mole trying to defend them, the public won.  The famous Xerox ad campaign, "you can't xerox a Xerox", continues to this day in a different form, urging the public to only use the term as an adjective describing the company’s products.

So what about Whac-A-Mole?  At its start, the term would probably be considered descriptive, since it describes the product: whacking a (fake) mole. 15 U.S.C. § 1052(e)(1) (prohibiting registration of a mark that is “merely descriptive” of goods),
Zatarain’s v. Oak Grove Smokehouse, 698 F. 2d 786, 793-93 (describing tests applied by courts to determine whether a mark is descriptive).  I’m going to assume that over the years, the game has secured enough of a place in popular culture to have acquired the secondary meaning in the eyes of the public necessary for a descriptive mark to receive protection. id. at 794 (describing common factors used to evaluate secondary meaning). 

So has it since become generic?  If so, perhaps Bob’s Space Racers can sue someone (the RIAA? the news media? a search engine?) for contributory genericide, sort of a twist on contributory trademark infringement.  Or dilution?  Maybe a bit of a stretch.  A leading case on generic marks states the test as follows: “We … hold that where the public is said to have expropriated a term established by a product developer, the burden is on the defendant [in a trademark infringement action] to prove genericness.” Murphy Door Bed Co. v. Interior Sleep Systems, 874 F. 2d 95, 101.  Wait a second.  Aren't I confusing apples and oranges?  The Zipper trademark became generic because competitors were making and selling zippers.  The RIAA isn't peddling arcade games that journalists are describing as Whac-A-Mole-like. 

Can a term become generic when its common use has become a metaphor?  A Google search for “whack a mole iraq” yields over 30,000 results.  If I created a computer game simulating the war and called it “Iraq-A-Whac-A-Mole” (catchy, isn’t it?), registration would be futile in light of the registered mark discussed above.  I’d probably receive a cease and desist letter and in my hypothetical world, sales would be in the millions, so of course I’d litigate.  I’d have some pretty strong evidence that “whac(k) a mole” has come to represent nothing more than the descriptive activity it conjures and would argue it has become a generic term.  cf. In re Bayer Aktiengesellschaft, 488 F. 3d 960, 967 (discussing and citing cases for the proposition that search results alone, out of context, provide little weight in deciding whether to grant a trademark registration).  Of course, Bob’s Space Racers would counter that the ubiquity of the term only serves to reinforce its strength and point to evidence that regardless of context, people think of the game when the term is used.  Whose side would you take?

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