Trademark Genericide: How To Protect Your Brand

by Revision Legal
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Revision Legal

Xerox, aspirin, thermos, and hoover were all once trademarks that lost their protected status because their names became generic. Most recently, Google’s trademark status was challenged unsuccessfully as reported here.

The US Court of Appeals ruled this month that Google still retains its trademark even though “google” has become synonymous with searching the internet. While “google” has become a verb for many, Google is a whole lot more. The court also noted that trademark genericide occurs when the name has become an “exclusive descriptor” that makes it difficult for competitors to compete unless they use that name.

What is a Trademark?

A trademark is a name of a product or service that is used in commerce so that customers can identify the source of the good or service. There are several categories of trademarks. The most successful trademarks are often suggestive (e.g., MicroSoft for software for microcomputers), arbitrary or fanciful (e.g., Apple for laptops and computers), as the distinctiveness of the trademark sticks in the memory of the consumer.

Trademarks can also be considered descriptive, or generic, but these marks are often not legally protectable under trademark law.  

Can a Protected Trademark Become Generic?

When a registered trademark owner fails to police and enforce the unauthorized use of their trademark, the trademark owner risks losing the mark through a form of abandonment known as genericide. Genericide is when a protected mark becomes a generic term for the item it is associated with over time. A trademark suffers genericide when the trademark or tradename becomes so commonly used by the general public that the trademark becomes synonymous with the product, and if the entity that owns the trademark does not fight to keep the trademark protected, the trademark or tradename can become a generic term, i.e., it can lose its legally protectable distinctness.

Genericide is when a protected mark becomes a generic term for the item it is associated with over time.

Genericide has happened to many unfortunate trademarks in the past. Some examples of generic terms that are used commonly today that were once trademarks include:

  • Xerox, commonly used to refer to photocopy.
  • Aspirin, generic for acetylsalicylic acid, which is commonly used to treat headaches.
  • Laundromat, for a coin operated laundry store.
  • Thermos, commonly used to refer to a vacuum flask thermal insulator.
  • Videotape, generic term used for the cartridge used in VCRs.

Avoiding Trademark Genericide

There are many things that a trademark owner can do to protect trademark rights from genericide. Some ways to help avoid a trademark from becoming generic include:

  • Monitoring the use of the trademark.

  • Enforcing trademark rights.
  • Educating companies and the public about the proper use of the trademark.
  • Always presenting the trademark in the proper form, i.e., always in the proper font/stylization, or all capital letters, and with the appropriate trademark symbol (e.g., ® or ™).
  • Never using the trademark in a generic manner.
  • Make clear to consumers that the trademark represents the brand and not the product itself.

Registered trademarks can often be the most valuable assets of your business and, unless you enforce your trademark rights consistently and regularly, you may lose those assets. Through internal education and external enforcement, your company and ensure that you protect your company’s assets and ensure that they do not become generic.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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