Genericide: Death of a Trademark

A vacuum flask? Thermos. Separable fastener? Zipper. Mobile garbage bin? Dumpster. Conveyor transport device? Escalator. The answers to each of the above questions were once distinctive trademarks and now are commonly used terms for specific products. They are all classic examples of dead trademarks.

‘Trademark Genericide’ means that the public identifies a trademark with a specific class of products and not as a source of origin of a particular product i.e. the proprietor. In lay man’s terms, it means that the marks, due to their own excessive popularity, have become descriptive terms for particular type of products. In the case of Smithkline Beecham Plc v. Farmex Ltd.[1], the court defined a generic name “as a name shared by many/any manufacturer… It is general as opposed to specific”. Further, it was held that, trademarks which are deemed generic are not entitled to protection within the ambits of the law.

It is interesting to note that companies using invented words as trademarks, like Yo-Yo (toy on a string), have stronger chances of getting registered as trademarks but the same strength is disadvantageous when it comes to enforcing trademark rights against genericization.

Why and how do trademarks become victims of genericide?

Trademarks may become genericized due to several reasons. Some of them are explained below:

a) Improper policing of trademarks by trademark proprietors’ is one major reason behind trademark genericization. It was observed that the proprietors’ themselves err and refer to the trademark as the name of the product in their own advertising. It is a sticky situation for the proprietors as they are stuck in between wanting to make their trademarks popular on one hand, and wanting to protect their trademarks from being used synonymously with a specific category of products. King-Seeley Thermos Co. was found to have intentionally used "Thermos" as a generic term to popularise the product.[2] However, since several trademarks have fallen prey to genericide, multinational companies now pay extra effort in trying to balance on the thin line between being a well-known trademark and having their trademark genericized. For example, Chrysler LLC ran an advertisement saying - “They invented “SUV” because they can’t call them Jeep®.”[3] – in order to bring out the fact that ‘Jeep’ is the trademark for the category of products being SUVs.

b) In today’s social media era, where anything can get viral with a click, the use of a trademark as a verb instead of a proper noun is common as well as harmful for the trademark’s distinctiveness, thereby leading to trademark genericization. For example, sentences like ‘Just google it’, ‘I just tweeted’, ‘Its photoshopped’ are very catchy and popularly used. However, the multinational companies having rights on these terms strongly condemn this practice. As rightly observed, “Continual use of the mark as a noun, rather than as an adjective identifying a particular brand, can lead to degeneration of a trademark”[4]. For example, Velcro, a brand name for hook-and-loop fasteners repeatedly urges the public to not use its trademark interchangeably for the type of product as they are at a high risk of losing their rights in the trademark. In 2017, the official YouTube page of the brand Velcro posted a video trying to create awareness about the issue.[5]

c) The failure of the trademark proprietors to give the product under the trademark an easily recognizable generic name in addition to the trademark name is also another reason for trademark genericization. As a result, many a times the trademark name is easier to remember and refer to the product. For example, it is easier to say ‘Jet Ski’ than say ‘Stand-up personal watercraft’.

d) A trademark for a ‘first of a kind’ product has higher chances of being genericized. This is because there being no other competing trademarks for similar products, the trademark enjoys a monopolistic position in the market, eventually becoming a synonym for the name of the product due to lack of competition. In Siegert v Findlater[6], the court held that: “A person who produces a new article and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own, because until somebody else produces the same article there is nothing to distinguish it from”. For example, due to lack of a simpler term for a ‘mobile garbage bin’, and it being a one of a kind product when it was launched, the Dempster Brothers brand ‘Dumpster’ over the years became synonymous to the actual product.

After effects of trademark genericide and how to prevent it:

As a result of genericide, a once distinctive trademark loses its distinctive nature and exclusivity as it slowly becomes a common noun for the specific category of products. This in turn means that other companies and competitors are free to use the genericized trademark in relation to their goods and services. At this point, the trademark has no legal protection and its proprietor has no legal claim on it.

In one of the most famous cases of trademark genericide i.e. Bayer Co. v. United Drug Co.[7], Bayer lost its trademark ‘Aspirin’ for the drug acetylsalicylic acid. Even though Bayer tried to prove the strength of the trademark by submitting that chemists understood ‘Aspirin’ to be specifically Bayer’s drug, the court dismissed the contention by holding that “whether a mark is generic does not depend on whether a select section of the public understands the mark as a source identifier, but rather whether the public as a whole understands the mark to refer to the product and its single source.”

In American Thermos Products Co. v. Aladdin Industries, Inc.[8], it was observed that due to the inability of the proprietor of the trademark to stop others from using “thermos” in connection with insulated bottles, the company suffered extensive loss in trademark rights. Additionally, the company also failed to prevent the generic use of the term itself in its advertising as well as prevent the public from using it synonymously. As a result, other insulated vacuum flasks also began to be referred to as thermos.

In DuPont Cellophane Co. v. Waxed Products Co.[9], it was observed that the term ‘Cellophane’ was used as a trademark for ‘transparent wrapping’. However, due to the product being a ‘first of its kind’ in the marketplace as well as due to improper advertising of the trademark name as the product name by DuPont Cellophane Co., the trademark ultimately became a victim of genericide.

In order to prevent trademark genericide, proprietors of trademarks can adhere to the following[10]:

Use the generic name of the goods with the trademark, for example, Q-Tips cotton swabs, and, if your product is the first entrant, come up with a generic term for the product;

Give proper notice of a registered trademark to consumers by using either the letter R enclosed within a circle, ® or for an unregistered mark, use TM. Further, the proprietors must periodically renew their registrations as this sends out a message to the public and the proprietor is serious about its trademark and the mark is not to be used generically;

Distinguish the trademark from surrounding text by capitalizing the trademark, using a distinctive typeface, or at the very least, capitalizing the first letter of the trademark as the same shall prevent the usage of the trademark as a verb;

Use the trademark as an adjective, example KLEENEX tissues;

Do not use the trademark as a noun, example, Band-Aid;

Do not use the trademark in the plural, for example, instead of saying buy two DR. PEPPERS, one should say buy two DR. PEPPER soda beverages;

Do not use the trademark as a verb, for example it is incorrect to say ‘XEROX the document’, the correct way to say it would be ‘make a copy using a XEROX copier’;

Use the trademark on a line of products rather than a single product (NIKE, used on sneakers and clothing);

Object to others’ misuse of the trademark by way of sending cease and desist notices, initiating infringement/passing off actions; and

Educate the public, including individuals within the trademark owner’s organization, distributors, dealers, and consumers, to ensure proper usage of the trademark. Misuse often occurs due to lack of education, not wrongful intent.

Several major multinationals of the likes Google Inc., Xerox Holdings Corporation, Adobe Inc. etc. are actively trying to prevent the use of their trademarks as generic terms.

In 2012, the word ‘ogooglebar’ translating to ‘ungoogleable’ was added as one of many new words in Sweden by the Language Council. As soon as Google Inc. got to know of the same, they contacted the Language Council and requested it defer use of the said word since it contained Google Inc.’s trademark and the same should not be used to refer to all search engines. Eventually the Language Council had to remove the term and this is one of the best examples of trademark policing.

Xerox Holdings Corporation came up with anti-genericide advertisements to educate the people regarding its trademark rights over the term ‘Xerox’, some examples – “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.” and “When you use 'xerox' the way you use 'aspirin,' we get a headache”. Johnson & Johnson Corporation also tried to strengthen its hold on its trademark when it changed the lyrics of their television commercial from “I am stuck on Band-Aids, cause Band-Aid’s stuck on me’ to ‘I am stuck on Band-Aid brand, cause Band- Aid’s stuck on me’. Further, Adobe Inc., in order to protect its trademark from being genericized, condemns the use of the trademark as a verb and has given extensive guidelines on how to refer to the trademark on its official website[11].

In 2012, the IPAB[12] held that if a company or brand had taken extensive measures to rectify and police the incorrect usage of their trademarked term including sending cease and desist notices, it will not be considered as generic term. All ad campaigns, emphasis on guidelines of use of trademark, oppositions initiated by proprietors of famous trademarks etc. shall be treated as evidence in case the trademark is being tried for genericide. It is also pertinent to note that a trademark does not become genericized by default. It can be said so only when the courts declare the same. As per Section 36(1) of the Trademarks Act, 1999[13], if a particular mark is extensively used by traders as the name of an article (or service) and not as a source identifier, the trademark in question becomes vulnerable to cancellation i.e. cancellation due to trademark genericide.

Conclusion

Popularity of a trade mark is a double-edged sword. While the ultimate goal of every proprietor is to transform its trade mark into a well-known mark and enjoy exclusive protection, the line between a well-known mark and a genericized mark is very thin. In deciding whether a trademark has become generic, courts refer to the Elliott v. Google, Inc.[14] case, wherein a reasonable question to decide on the question of genericide was “whether the primary significance of the term in the minds of the consuming public is now the product and not the producer.” Further, in Bayer Co. v. United Drug Co.[15], it was held that “What is relevant is not whether some small portion of the public considers the term an indicator of the source, but rather what the ‘entire consuming public’ considers the term to indicate.” To conclude, it is not necessary that every person uses the trademark interchangeably for the product name, but as long as every person understands the meaning of a sentence comprising the interchangeable use of a trademark with a product, the trademark is said to be genericized.

[1] (2010) 1 NWLR at page 298, per Rhodes-Vivour, J.C.A

[2] King-Seeley Thermos Co v Aladdin Ind, 1963.

[3] http://centralpt.com/upload/329/4190_Apage_25_EJS_2008.pdf

[4] Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 181 (1896)

[5] https://www.youtube.com/watch?v=rRi8LptvFZY

[6] 1878

[7] 272 F. 505 (S.D.N.Y. 1921)

[8] 207 F. Supp. 9 (D. Conn. 1962)

[9] 85 F.2d 75 (2d. Cir. 1936)

[10] https://www.inta.org/INTABulletin/Pages/PracticalTipsonAvoidingGenericide.aspx

[11] https://www.adobe.com/legal/permissions/trademarks.html?PID=7104715

[12] B.V. Ilango Himachalapathy Vs. M/S Rank Xerox Limited and Others

[13] Section 36(1) of the Trade Marks Act, 1999 - The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word or words which the trade mark contains or of which it consists as the name or description of an article or substance or service: Provided that, if it is proved either—

(a) that there is a well-known and established use of the said word as the name or description of the article or substance or service by a person or persons carrying on trade therein, not being used in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified by the proprietor; or

(b) that the article or substance was formerly manufactured under a patent that a period of two years or more after the cesser of the patent has elapsed and that the said word is the only practicable name or description of the article or substance, the provisions of sub-section (2) shall apply.

[14] Elliott v. Google, Inc., No. 15-15809 (9th Cir. May 16, 2017).

[15] Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).

The article was originally published on www.lexology.com on June 19,2020 and can be accessed here.