Genericide is the process by which a brand name loses its distinctive identity as a result of being used to refer to any product or service of its kind.
Bayer Co. v. United Drug Co. was a seminal case in which Bayer lost its trademark for Aspirin to what experts now refer to as “Genericide.” That 1921 case set the table for the modern standard that courts currently follow: If a brand name is understood by the public to refer broadly to a category of goods and services rather than a brand’s specific good or service, a company may be at risk of losing its trademark.
These are many examples of trademarks that have become common, descriptive terms in connection with the goods covered by them.
Escalator, cellophane, and laundromat have all lost their trademark status to Genericide. A well marketed and successful brand must be careful not to become a common word. For a brand to function asa trademark, it must identify the source of the goods and indicate to consumers that these goods are distinguishable from other brands. Even after a trademark has been granted, the trademark could be removed from the Trademark Register if it becomes so common that it no longer describes a brand, but rather the actual goods or services themselves.
Back in 2012, Google filed an objection to Chris Gillespie’s use of Google in their domains. Gillespie had registered 763 domain names, which included the word “google”, such as “googledisney.com” and “googlebarackobama.net”. At the time, Google successfully argued that Gillespie’s conduct constituted trade mark infringement in the US. Gillespie and David Elliot filed an action against Google on the grounds that the name has become a generic term to describe internet searching and therefore should not be protected as a trademark.
Thanks to a ruling in favor of the search giant, Google dodged the death of Genericide, or trademark erosion. The District Court of Arizona found that Gillespie and Elliot failed to present sufficient evidence that Google has become a generic term. This was upheld when Gillespie and Elliot appealed the District Court’s decision and the judge stated that “the mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic”.
One campaign against Trademark Genericide that caught my attention was the one by the trademark attorneys at VELCRO. Velcro took a stand against trademark ‘genericide’ trying to inform the public, in a fun and entertaining way, about the danger businesses face when the public begins using their trademark as a generic noun for a type good or a verb for the act of using that type of good.
VELCRO is currently the subject of several registered trademarks for company’s brand of hook and loop fasteners invented in the 50’s. Although Velcro’s video may seem lighthearted, it touches on a very serious topic where valuable trademark registrations can be lost due to the public’s use and perception of the term as generic.
In determining whether a trademark has succumbed to genericide, the US test asks whether the public views the trademark as the product rather than the origin of the product. If the public still views the trademark as the origin of the product, the trademark is still effective.
There are some basic tips to prevent the Genericide of your brand. If you have registered a trade mark, follow these tips:
Always use the TM or R symbol in connection with your trademark to ensure that everyone knows that it is a brand rather than a generic term;
Use your mark in conjunction with a noun;
Never promote using your trademark in a descriptive way;
Enforce your rights at an early stage, taking action straight away to stop the conduct as soon as you become awareof someone using your trademark;
Educate and remind the public about the proper use of your trademark.
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