Saving your Mark from Trademark Genericide
Today, several generic terms that we use, such as ‘escalator,’ ‘xerox,’ ‘cellophane,’ sound common but were once protected as trademarks. How have then they become generic terms? In the Trademark Law context, genericide, or the conversion of a trademark into a generic phrase, occurs when a trademark becomes the generic word for the product or service with which it is associated.
What is Genericide of a Trademark?
Genericide of a trademark occurs when it is reduced to a common term identifying a category of products. Simply put, trademark genericization is the death of the mark as it no longer acts as a source indicator of the brand owner. A wide array of linguistic, legal, and marketing-related factors contribute to trademark genericization.
Sadly, targets of genericization are often successful brands whose goods were or are market leaders in their sector. In a typical example of trademark genericide, a brand owner invests in promotional strategies to popularize his brand, hoping to make the product a frontrunner in its category. The brand then becomes not only successful but also ends up becoming slang to mean the entire product category. Consumers stop referring to the trademark as a proper noun for the brand owner’s product but refer to it as a common noun to mean a product category. Unluckily for the trademark owner, once a trademark becomes generic, it loses its Trademark Protection and becomes available to the public. It means that competitors gain the freedom to refer to their products using the genericized word because that word no longer represents the source of service; instead, it now represents the product and/or its general category.
However, this is never an overnight phenomenon. It takes several years before a trademark becomes a victim of genericide. Also, if a trademark becomes generic, it only becomes generic for specific goods and services. A thermos might be the generic name for an insulated beverage container, but THERMOS® is still a protectable outdoors/leisure brand for several other non-generic products. Genericism is not a free license to use a competitor’s trademark.
Reasons behind Trademark Genericide
Broadly speaking, there are three main reasons for the genericide of a mark:
- If a product is one-of-a-kind and first in its product category, the public may come to understand the company’s trademark as the generic term for the product.
- If a product is new and there is no alternative generic term available to describe it, the public may resort to using the mark to describe the product.
- The trade holder’s generic use of its mark can lead to genericization.
Generic Words cannot be Trademarks
Generic words or phrases cannot be trademarks because the public would never think that the generic word is connected to a specific company. From a business viewpoint, generic terms are simply too useful for identifying a particular product and allowing a single company a monopoly over a generic term would give that company too much of competitive advantage. ESCALATOR, THERMOS, CELLOPHANE, and ASPIRIN are often cited as examples of marks that have been declared generic. Interestingly, in these cases, the trademark owner itself/himself misused the trademark as the generic name of the product in advertising and Patent Applications. One advertisement of ESCALATOR, for example, began as “Otis elevators, Otis escalators.” By using ‘escalator’ in exactly the same way as the generic word ‘elevator,’ the trademark owner suggested that ‘escalator’ was also generic.
Generic marks are different from descriptive terms, which can act as a trademark, but only after the user has effectively promoted the trademark so that when consumers think of the descriptive word in connection with specific products (or services), they only think of that one ‘source.’ For instance, American Airlines is an airline based in America. From years of use and promotion, they now enjoy exclusive rights in the phrase. However, they will never be able to own just the word ‘Airlines’ as the word is generic for airline service.
Saving Your Mark from Genericide: Best Practices
A trademark owner needs to be mindful of some basic rules concerning its/his usage. These include never using the mark as a verb or in plurality and always identifying it either in upper case or with symbols ® or TM. Furthermore, brands must develop an internal best practices strategy to avoid the genericide of their trademark right from the time the mark is still in development. Before launching the coined mark, they should prepare a generic term that is a noun to use with the coined mark. Another way is to use the brand as an adjective with the generic term. For example, ‘ROLLERBLADE in-line skates’ or ‘PING PONG table tennis.’ Also, a standard, written explanation for correct usage of your mark should be prepared that can easily be distributed to third parties, such as licensees or general consumers, when incorrect usage is found. Many brands also resort to anti-genericide marketing campaigns. In 2003, the photocopier firm Xerox came up with an advertisement that read, “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache.”
For combating trademark genericide, conventional trademark enforcement measures have to be coupled with unconventional methods. Innocent misuse of a mark can be addressed by an educational letter or soft legal notice. Misuse in domain names and mobile applications can be addressed by take-down notices. Softer approaches are budget-friendly and leave the brand owner with reserves for aggressive court actions when needed. Furthermore, the company’s marketing team needs to operate hand in hand with its legal team. A catchy advertisement slogan may be risky for the trademark. For instance, many brands use their mark as a ‘verb’ in their advertisements. It can be harmful as consumers quickly latch on to such phrases, and it leads to genericide.
A brand owner combating trademark genericide has to adopt a multi-faceted strategy. Moreover, such an owner must remain vigilant and proactive at all times as the risk of genericization is never truly eradicated. These protection strategies are a must for any brand looking to safeguard its mark from genericide. ✅ For more visit: https://www.kashishipr.com/