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Intellectual property law

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A genericized trademark (also known as a generic trademark, proprietary eponym) is a trademark or brand name that has become the colloquial or generic description for (or synonymous with) a general class of product or service, rather than the specific meaning intended by the trademark's holder. Using a genericized trademark to refer to the general form of what that trademark represents is a form of metonymy. (See examples below.)

A trademark typically becomes "genericized" when the products or services with which it is associated have acquired substantial market dominance or mind share. The term is legally significant in that unless a company works sufficiently to prevent such broad use of its trademark, its intellectual property rights in the trademark may be lost.

Contents 1 Examples 2 Legal concepts 2.1 Avoiding genericide 2.2 Terminology 2.3 Tradename status reasserted 3 Opposite effect in other legislation 4 Protected designation of origin 5 Non-trademarks 6 See also 7 Notes 8 References 9 External links

[edit] Examples

A few examples of trademarks which have either lost their legal protection, or are commonly used generically by consumers are:

• Q-Tip – Synonymous in the US with the term "cotton swab"
• Band-Aid – Johnson & Johnson's brand of adhesive medical bandages
• Kleenex - Synonymous in the United States with facial tissue
• Coke – Although trademarked by The Coca-Cola Company, it is synonymous with soda in the Southern United States^[1] and competing brands of cola in the United Kingdom.
• Escalator – originally a trademark of Otis Elevator Company^[2]
• Kerosene^[3] – originally registered as a trademark by Abraham Gesner in 1854^[4]

[edit] Legal concepts

Whether or not a mark is popularly identified as genericized, the owner of the mark may still be able to enforce the proprietary rights which attach to the use or registration of the mark, so long as the mark continues to exclusively identify the owner as the commercial origin of the applicable products or services. If the mark does not perform this essential function and it is no longer possible to legally enforce rights in relation to the mark, the mark may have become generic. In many legal systems (e.g., in the United States but not in Germany) a generic mark forms part of the public domain and can be commercially exploited by anyone. Nevertheless, there exists the possibility of a trademark to become a revocable generic term in German (and European) trademark law.

The process by which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time where a mark is not used as a trademark (i.e., where it is not used to exclusively identify the products or services of a particular business), where a mark falls into disuse entirely, or where the trademark owner does not enforce its rights through actions for passing off or trademark infringement.

One risk factor which may lead to genericide is the use of a trademark as a verb, noun, plural or possessive, unless the mark itself is possessive or plural (e.g., "Friendly's" restaurants).^[5]

[edit] Avoiding genericide

Trademark owners will naturally seek to maximize the popularity of their marks, and may believe that a certain level of genericity demonstrates how well-known and successful a mark has become. However, generic use of a trademark presents an inherent risk to the effective enforcement of trademark rights and may ultimately lead to genericide.

Trademark owners may take various steps to reduce the risk of genericide, including educating businesses and consumers on appropriate trademark use, avoiding use of their marks in a generic manner, and systematically and effectively enforcing their trademark rights. If a trademark is associated with a new invention, the trademark owner may also consider developing a generic term for the product to be used in descriptive contexts, in order to avoid inappropriate use of the "house" mark. Such a term is called a generic descriptor, and is frequently used immediately after the trademark to provide a description of the product or service. For example, "Kleenex tissues" ("facial tissues" being the generic descriptor) or "Velcro" ("hook-and-loop fasteners" being the generic).

Where a trademark is used generically, a trademark owner may need to take special proactive measures in order to retain exclusive rights to the trademark. Xerox provides one successful example of a company which was able to prevent the genericide of its core trademark through an extensive public relations campaign advising consumers to "photocopy" instead of "Xeroxing" documents (the brand did become generic in Russian, Bulgarian, Polish, Portuguese and Romanian, though; see list of generic and genericized trademarks). Another common practice amongst trademark owners is to follow their trademark with the word brand to help define the word as a trademark. Johnson & Johnson changed the lyrics of their Band-Aid television commercial jingle 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." Google has gone to lengths to prevent this process, discouraging publications from using the term 'googling' in reference to web-searches. In 2006, google was defined in the Merriam Webster Collegiate Dictionary and the Oxford English Dictionary as a verb meaning "to use the Google search engine to obtain information on the Internet."^[6][7]

One example of an active effort to prevent the genericization of a trademark was that of the LEGO Company, which printed in manuals in the 1970s and 1980s a request to customers that they call the company's interlocking plastic building blocks "'LEGO blocks' or 'toys' and not 'LEGOs'." While this went largely unheeded, and many children and adults in the U.S. referred to the pieces as "LEGOs", use of the deprecated term remained largely confined to the LEGO Company's own products – and not, for example, to Tyco's competing and interchangeable product – so genericization of the LEGO trademark did not occur.

[edit] Terminology

The terms genericide and genericized trademark are not technical terms. Alternative terms have been suggested by various commentators, such as the judge in Plasticolor Molded Products v. Ford Motor Company, who called genericide a malapropism and suggested genericization or trademarkicide,^[8] a member of Cecil Adams's contributing board who suggested brand eponym in The Straight Dope Mailbag,^[9] and others who have suggested proprietary eponym. However, to date only genericide has been used in legal literature, other than the Plasticolor case already mentioned.^[10]

[edit] Tradename status reasserted

Aqua-Lung was originally a tradename for a make of open-circuit scuba set made according to the Cousteau-Gagnan patent. It quickly slipped into use as a generic, but its tradename status has been largely restored in English-speaking countries, but it remains a generic in Russia (акваланг) and other countries.

[edit] Opposite effect in other legislation

The section above describes the situation in countries such as the United States, where a genericization causes a trademark to lose its protection, a consequence the trademark owner might wish to avoid. In other countries (such as Germany), a trademark stays protected even after genericization. In this case, the outcome is very positive for the owner; the customer might not even know the proper non-trademarked term for the product, or consider this term as very artificial sounding and/or inconvenient, and hence associates only the trademark owner's product with the whole range of products, possibly even being ignorant about alternatives.

The classic example is Bayer's trademark for the drug Aspirin. A customer at a pharmacy is more likely to ask for "Aspirin" than for "acetylsalicylic acid tablets", which is the name all manufacturers of generic versions of the drug are forced to use in order not to infringe the trademark. In the United States, Bayer lost the trademark to the word aspirin after World War I. In 1921, a landmark ruling by Learned Hand established "aspirin" as a genericized trademark.^[11]

[edit] Protected designation of origin

Since 2003, the European Union has actively sought to restrict the use of geographical indications by third parties outside the EU by enforcing laws regarding what is known as "protected designation of origin". Although a geographical indication for specialty food or drink may be generic, it is not a trademark because it does not serve to exclusively identify a specific commercial enterprise, and therefore cannot constitute a genericized trademark.

The extension of protection for geographical indications is somewhat controversial because a geographical indication may have been registered as a trademark elsewhere. For example, if "Parma Ham" were part of a trademark registered in Canada by a Canadian manufacturer, ham manufacturers actually located in Parma, Italy might be unable to use this name in Canada. Bordeaux, cheeses such as Roquefort, Parmesan, and Feta, Pisco liquor, and Scotch whisky are examples of geographical indications. In the 1990s, the Parma consortium successfully sued the Asda supermarket chain to prevent it using the description "Parma ham" on prosciutto produced in Parma but sliced outside the Parma region.

[edit] Non-trademarks

In some cases, companies have managed to register common names as trademarks, but this typically results in the eventual cancellation or surrender of the registration concerned. This has occurred in the United States in relation to rooibos.^[12]

[edit] See also

• Brand
• Brand management
• Eponym
• Proper adjective
• Synecdoche
• Trademark dilution

[edit] Notes

[edit] References

• Room, Adrian (1983). Dictionary of Trade Name Origins. Routledge. ISBN 0710201745. 

[edit] External links

• American Proprietary Eponyms, a project by R. Krause, December 1997
• Article on generic brands
• Visiobrand brand directory