Genericide: A Byproduct of Success
The spectrum of distinctiveness is an important element of trademark law that determines the strength of a trademark. A major requirement for trademark eligibility is to show that the mark in question has a distinctive character. In the United States, the spectrum of distinctiveness was established in the case Abercrombie & Fitch Co. v Hunting World.[1] Hunting World also used the term “safari” on a selection of their products, including hats and shoes. In his opinion, Judge Friendly stated that the Lanham Act identifies four different categories of terms with respect to trademark protection.[2] In ascending order, the categories roughly reflect a brand’s eligibility for trademark protection.[3] They include (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful.[4]
In contrast, genericide is the process of a product’s name becoming generic to the point of losing distinctiveness. This often occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services, irrespective of their source. In the legal sense, it is also recognized as a form of abandonment. This happens when the mark becomes the generic name for goods or services for which it is used.[5]
A lot of items we use today once had strong trademarks, but the USPTO doesn’t police trademark usage, and the onus is on the owner to protect their mark. For example, products like aspirin were once protected by a trademark, later considered invalid on the grounds of genericide.[6] Bayer, the original trademark holders, obtained a United States patent on the pain-killer acetyl salicylic acid. For many years, Bayer sold this in powder form, later transforming the powder into tablets sold as aspirin. Since “aspirin” was used by the public as the name of the drug itself, the District Court held that Bayer had lost trademark rights in the word. Despite this loss, Bayer still holds the trademark in about 80 countries.
The term “thermos” is another result of genericide.[7] Though King-Seeley Thermos Company held the trademark name for its popular vacuum flask, the courts declared the trademark to be generic in the United States. Despite the plaintiff’s substantial effort to preserve the trademark within their industry, there was little they could do to prevent the public from using ‘thermos’ in a generic rather than a trademarked sense.[8]
A lot of marks are still legally protected, but tend to be used as generic terms. They don’t lose protection, as the public are still aware of its trademark, but competitors do not use them. For example, ‘Kleenex,’ a brand of facial tissues owned by Kimberley-Clark, is often used by consumers as if it were generic in the U.S., France and Canada despite being a legally recognized trademark.[9]. Another good example includes Microsoft’s “PowerPoint,” a slideshow presentation program which is also used as a generic term, even though some competitors have their own versions of the program – for example, Apple’s Keynote.[10]
Genericide is a fate that a trademark owner can easily avoid through various methods. One can give proper notice of a registered trademark by including “Registered in U.S. Patent and Trademark Office”; “Reg U.S. Pat. & Tm Off.”; or, the letter R enclosed within a circle.[11] It is vital that the trademark user ensure that their trademark is used as both an adjective and a noun, in the singular and in the plural.[12] Another important step that a trademark owner can do to prevent their brand from becoming generic is to educate the public, including industry members, distributors, dealers and consumers, to ensure proper usage. For example, Coca-Cola famously dissuaded people asking for a “coke,” even adding a slogan stating customers should “[a]sk for it by its full name – then you will get the genuine.”[13]
Another great example of education was from Xerox, who created an ad campaign informing consumers that Xerox cannot be used as a verb.[14] Taking these steps will ensure that a trademark holder does not have to worry about losing their mark to genericide.
Footnotes
