Genericide is a nightmare for brands - losing the trademark for a key product because it's become too successful. Red Points takes a look.
A trademark includes any word, name, symbol, or device, or any combination thereof that distinguishes a product or service from other products or services in the marketplace and which is perceived by consumers as an indicia of source. 15 U.S.C. § 1127.
Trademarks serve several important functions such as identifying and distinguishing the trademark holder’s products or services from its competitors’ and indicating to consumers that products or services bearing said marks come from a specific source, and therefore, are of similar quality.
Trademarks are extremely valuable as they symbolize the holders’ business goodwill and loyalty among consumers, which takes significant time and resources to cultivate. The objective of this article is to provide an overview of how genericide can lead to loss of valuable trademark rights and what steps mark holders can take to prevent this demise.
Understanding Genericism and Genericide
A generic trademark is a mark that is used to identify the products and services themselves instead of the specific source or brand name for the product or service. For example, using trademarks such as “best smartphone” to market smartphones or “great email” for an email service provider would qualify as generic trademarks.
Genericide occurs when extremely popular marks that started out as valid fanciful, arbitrary, suggestive, or descriptive marks become generic over time because consumers start associating these marks with the products and services themselves instead of its specific source.
So, in a way, genericide is the price of fame. Many famous trademarks have died over time due to genericide, some examples include Thermos, Teflon, Aspirin, Zipper, Pilates, Escalator, and Cellophane.
Genericide and Genericism Factors
The following are some factors courts would consider in determining whether a mark is or has become generic over time:
In the Thermos and Teflon cases, the courts considered what was the primary significance of the registered mark to the relevant public. The primary significance of the registered mark to the relevant public is generally determined by survey evidence of public use of the trademark in question.
The relevant public can be asked questions such as how or what would you ask for when purchasing the product or service which bears the trademark. If the survey data shows that a statistically significant number of consumers use the trademark to refer to the product or service itself when making a purchase, regardless of the source of the product, it would be considered as evidence of genericide.
Other surveys in which consumers are given a list of trademarks, which includes the trademark in question, and are asked to state whether, in their opinion, the marks are brand names or common names for the products or services themselves can also be employed.
In the Aspirin case, the competitors’ use of the mark Aspirin to market pain relieving products was considered in determining whether the mark had become generic. Bayer’s own use of its trademark Aspirin as a noun by advertising its product as "Bayer- Tablets of Aspirin" was also considered to be evidence of genericide.
In Elliott v. Google, the court when evaluating genericism of the Google trademark stated that “verb use does not automatically constitute generic use.” The court considered evidence indicating that both media and consumers used the verb “google” both in a discriminate sense, with the Google search engine in mind, and in an indiscriminate sense, with no particular search engine in mind. But such ambiguous evidence was found to be insufficient to indicate “that the primary significance of the word ‘google’ to the relevant public is as a name for internet search engines generally and not as a mark identifying the Google search engine in particular.”
In Elliott v. Google, the court also considered dictionary definition evidence, in which the primary definition of the term google was identifying its specific source and only secondary definitions associated the term google with its indiscriminate verb usage, as indicating that the Google mark had not become generic.
Availability of alternative terms other than the trademark itself to describe the products or services represented by the mark is another factor considered by courts in determining genericide. If there are no alternative terms besides the mark itself for the product or service, it would indicate that mark has become generic. For example, the term search engine is an alternative term to describe the class of products or services represented by the Google mark.
Protecting trademarks from Genericide
There are several steps trademark holders can take to prevent their marks from becoming generic over time. First, trademark holders whenever using their trademark should always indicate that it is a trademark by using disclaimer statements or symbols such as TM or ® for registered trademarks.
Clearly labeling marks as trademarks would avoid creating confusion in the minds of consumers between the products or services themselves and the marks associated with them.
Second, trademark holders should be very careful to not use their marks to refer to the products or services they represent such as using the marks in the noun forms, especially not in advertising their products or services like Bayer did when advertising Aspirin.
Third, trademark holders should actively police how media or competitors use their trademarks. If media organizations or competitors misuse their trademarks to refer to the products and services they represent instead of as a source indicator, mark holders should consult a trademark attorney to determine possible legal options such as sending a cease or desist letter or filing a lawsuit to stop such misuse.
Finally, in rare circumstances, it may even be possible to reclaim a trademark after genericide has occurred if sufficient time has passed and the mark holder can make a showing indicating that the public no longer identifies the mark with the product or services themselves and instead associates it with the specific source or brand name. For example, the SINGER trademark was determined to have become generic for sewing machines in 1896, but in 1953, the mark holder was able to reclaim the SINGER mark by making such a showing.
Brands need to be aware of how their trademark can be damaged. This can mean attempting to foresee issues that won't become a problem until way down the road, such as trademark genericism. Failing to protect trademarks can be disastrous for brands. Duncan Toys, for example, lost a lawsuit in 1965 to protect their trademark for the Yo-Yo, resulting in the company's bankruptcy declaration.
However, as we've seen, there are strategies available to prevent this from happening. Brands are urged to ensure that protected names are clearly labelled as trademark, to not use their product name as a standard noun, and to ensure the trademark is properly handled in the media.