Genericide

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Genericide

While infringement and litigation can be major concerns for intellectual property trademark owners, genericide could literally mean the end of their brand. The United States Patent and Trademark Office (USPTO) does not allow for generic terms to be registered, and after registration even the strongest trademarks can eventually fall victim to genericization.

Genericide Definition

Genericide occurs when a trademark that already has federal protection falls into common usage such that it no longer identifies a brand.  In other words, if a term goes from being identified as a source of goods to describing a category of goods or services, it’s considered to be genericized.

The USPTO considers genericide a form of trademark abandonment. This is because trademark owners are supposed to take active measures to prevent this problem from happening. Once genericization has occurred, the owner no longer has exclusive rights over the trademark. This eliminates many of their legal remedies against trademark infringement.

The USPTO does not typically initiate action against genericized trademarks on their own. Instead a challenge by a third party would be required.  You may not know that your trademark is facing genericide until the wheels are already set in motion, so taking proactive steps is your best bet for protecting your trademark.

Can Genericized Trademarks be Registered?

By their very definition, a genericized trademark cannot be registered with the USPTO.  Such trademarks will be rejected by the trademark office upon filing.  If a trademark application is filed that you believe is generic, your best option is to file a letter of protest.  If the trademark office approves a trademark that you believe is generic, your option at that point is to file a trademark opposition.

Proving Genericide

After a trademark is registered, the two most common ways that genericide is confirmed is through trademark cancellation or trademark litigation and. If the owner of a registration files a lawsuit in relation to infringement, the opposing party can argue that the trademark has become genericized in the market.

If a defendant can prove that genericide has occurred, the IP in question will lose all protection. Third  parties can also take proactive steps to remove trademark protections by filing a Petition to Cancel. In many circumstances, these petitions can only be filed within five years of registration. When they involve genericide, though, there is no deadline.

Anyone filing a cancellation request must also show that they have legal grounds to do so. Whether the issue of genericide is decided through the USPTO or federal courts, though, the following information is considered when deliberating on whether it has occurred.

  • What is the genus of goods or services at issue?
  • Does the relevant public understand the designation primarily to refer to that genus of goods or services?

Paradoxically, it’s typically only successful brands who are in danger of genericide. While market dominance is no doubt a positive outcome, it can result in consumers using a trademarked property to describe the product or service itself.  This was evidenced in recent litigation where Google was facing potential genericide thanks to the wide use of “google” to mean ‘search the internet.’

Courts are often hesitant to declare a protected trademark to be genericized. When USPTO examining attorneys or federal courts are considering the issue, though, each of the following may be presented as evidence:

  • Newspapers or online: Genericized use of a trademark (e.g. as a verb or improper noun) in commonly read materials can serve as evidence that the general public views a term as generic.
  • Trade journals: The use of a trademarked term to describe a product or service category by professionals in a field can also prove genericide.
  • Dictionaries: Terms listed in dictionaries typically convey public perception.
  • Consumer surveys: These can show just how many consumers actually relate a trademarked term to a product or category rather than the brand.

Proving trademark genericization may be a difficult process, but it’s certainly not an impossible one. Some of the largest corporations in history have fallen victim to genericide. Many have tried to come back from the brink.

In 1896, the Supreme Court found that the term Singer had become genericized as meaning ‘sewing machine.’ In 1958, however, the Fifth Circuit decided they had recaptured the brand back from the public domain. The First and Eleventh Circuits have also acknowledged that a genericized trademark may be able to regain its distinctiveness.

The Federal Circuit has likewise noted that genericized terms that are elements of other trademarks may be able to regain protection. The Fifth and Seventh Circuits, however, have maintained that a property cannot recover federal safeguards once genericide has occurred.

Preventing Brand Genericide

Once a trademark becomes dominant in the market, the risk of genericide greatly increases. To avoid genericization, trademark owners can take the following steps to help avoid the issue.

  • Add generic term: Adding a generic name to the brand (e.g. KODAK cameras) helps consumers differentiate the brand from the product type. Create a generic term if your product is the first of its kind.
  • Don’t use as a noun: Using your trademark as an improper noun could lead to its identification as a product type rather than a brand identifier.
  • Don’t use as a verb: A trademark that’s used as a verb could develop common usage among consumers to describe the actions of all products within the same category.
  • Add the word ‘brand’: Much like adding a generic term, placing the word ‘brand’ after your trademark will indicate that it’s a specific brand within a subset of products or services.
  • Diversify your offerings: Companies that sell products or services in more than one category are less likely to face genericide. It’s difficult to relate a trademark to a single class when multiple products types are being sold.
  • Monitor licensee uses: It’s imperative to maintain a level of control when licensing your trademark. If licensees engage in inappropriate use (e.g. using as a noun), genericization is a real possibility.
  • Avoid using in plural form: Plural usage of brand identifiers can also make them appear as improper nouns. Pluralize the generic term instead (e.g. Apple computers).
  • Provide public notice: You should always use the appropriate trademark symbol to notify consumers that the term or design in question is a brand identifier.
  • Never abbreviate: Anything utilized to identify your brand should be used in its full form. Abbreviations of these identifiers can detract from their strength.
  • Respond quickly: Genericide doesn’t typically occur overnight. If you realize your trademark is being used generically, take active steps to lessen this usage with advertisements that make clear distinctions.
  • Distinguish from surrounding text: Utilize capitalization or unique fonts to distinguish a brand identifier from other surrounding text.
  • Fight against infringement: Genericide occurs most commonly when competitors improperly use a trademark and aren’t held accountable.

These active measures are all geared towards preventing the generic use of a protected brand identifier. It all comes down to public perception, so it’s essential to clearly distinguish a trademark from other brands, terms and overall verbiage in the minds of consumers.

Examples of Genericide

While rare for most companies, many companies have lost valuable trademarks over the years due to this issue. There are also many examples of genericide that are currently playing out right before consumers’ eyes.

Escalator

Otis Elevator Company once had exclusive rights over the term ‘escalator.’ They mistakenly used their trademark in the form of a noun with the advertisement, “the latest in elevator and escalator design.” Using the name in a generic way led to consumers no longer seeing it as a trademark.

Aspirin

By striving to put the term ‘aspirin’ into wide use, Bayer accidentally caused genericization. The generic name they created (i.e. monoacetic acid ester of salicylic acid) had the sole intent of making doctors simply say ‘aspirin.’ This eventually led to its generic use in America.

Yo-Yo

Papa’s Toy Co. Ltd. had exclusive rights over the term ‘Yo-Yo,’ but the term became generic in America because the trademark was improperly issued.

Xerox

The brand identifier ‘Xerox’ has become nearly synonymous with copy machines (e.g. “Can you xerox this for me?”). The brand took aggressive measures to prevent the loss of their rights. This included an ad campaign that stated, “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”

This advertisement shows the brand attempting to stop the use of their property as both a verb and noun, and it also adds a generic term and the trademark symbol to set the identifier apart.

Tabasco

When consumers started using the word ‘tabasco’ synonymously with ‘hot sauce,’ the brand took active measures to distinguish its product in the minds of consumers. This included an advertisement that consisted of nothing other than two Tabasco bottles, the company logo and the phrase, “TABASCO is a registered trademark & service mark exclusively of McIlhenny Company, Avery Island, Louisiana 70513.”

Laundromat

The ‘Laundromat’ was introduced by Westinghouse Electric in 1940. At the time, it merely described a new model of washing machine that could be mounted to the wall. The last time the term was listed as registered by Westinghouse was in 1952.

By allowing the trademark to expire, Westinghouse allowed the trademark to become generic. This eventually led to its widespread use to identify businesses that offered clothes washing services.

Linoleum

The Linoleum Manufacturing Company was established in 1964. The term ‘linoleum’ is another example of genericide that didn’t go through the typical process. The inventor of the product never even registered the trademark for protection. By the time the owner went to court to defend the trademark, genericization had already occurred.

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