A successful trademark helps business owners in many ways, however, this success also comes with its own problems. One of them is losing the trademark protection rights when the trademark becomes widely recognized that it becomes the term used by the public to identify the product or service itself rather than its source. This phenomenon is known as “Trademark Genericide.”

It would be surprising to some to discover that escalator, aspirin, Jet Ski, Jacuzzi, ChapStick, and trampoline are actually brand names and not the name of the product itself, some will even struggle to name the actual product.

A primary function of trademarks is helping consumers identify and distinguish the source of the products or services in the market, and for trademarks to perform this function effectively, the trademark should be distinctive, therefore earning legal protection. However, this protection can be lost in many ways, and one of the most surprising and ironic ways is when the trademark becomes too famous that it now represents the common name for the product or service.

In this article, we are going to discuss the concept of trademark genericide, its causes, and impact on businesses, along with the best strategies to avoid it.

Trademark Genericide is caused by multiple reasons, one of the main reasons is the lack of a generic term to describe the product or the service of the trademark, which leads the public to use the trademark as a name for this product or service. A case in point is the Aspirin case, “Aspirin” was a trademark owned by Bayer Co. for their new patented pain killer that contains acetylsalicylic acid, the product was monopolized by the company for long time with little to no competitors in the market which led to people using the trademark to describe any pain killer which contains acetylsalicylic acid, that quickly led to the judicial ruling in the famous case Bayer Co. v. United Drug Co deeming the trademark generic shortly after the expiry of their patent.

Another significant reason that can cause the trademark to enter the public domain is how the trademark is used and advertised. Companies with no awareness of this concept often engage in aggressive, unregulated advertising that leads the consumers and even the owners themselves to use the trademark as a verb, noun, or plural, which makes it easier for it to slip into everyday language and speech. A notable example of a trademark that almost entered the public domain due to the manner in which it was used, but was luckily saved by its owner’s efforts, is “Xerox”. People start using it as a verb like “Xerox it” or ” Xerox this” as a way to say “photocopy it”  or “photocopy this”. However, the owner Xerox Holdings Corporation quickly realized the problem and started campaigns including the brand in its full sense, reminding people that the trademark is “Xerox brand photocopier” instead of using “Xerox” alone or as a verb and synonym for photocopying.

The line between fame and genericide is very delicate and requires attention from trademark owners. At first glance, it seems like an indicator of success and fame that people are not only recognizing your brand and associating it with the products and services you offer as a business owner, but also using it to describe the actual product or service. However, this fame is a blessing that could turn to a curse if not managed properly, and may lead to losing the protection of the trademark if it becomes too common, which will allow competitors to use it freely, leading to loss of revenue and long years of effort.

Fortunately, there are many ways trademark owners can avoid trademark genericide, whether they are in the early stages of developing their trademark or after their trademark has gained momentum and is heading toward being generic. The Famous and Well-Known Marks Committee of the International Trademark Association suggests multiple approaches, which include:

Clever and careful advertising:  this approach can be executed in many ways, such as using the general name of the product or service alongside the brand, or even providing a general term for the product in case the product is unique and new, this generic term must be simple and easy to use in everyday language, so people won’t ignore it. An example of this would be the way the “Kleenex” trademark owner started advertising the trademark as “Kleenex brand tissue” or “Kleenex facial tissue“, when people started to use “Kleenex” solely to describe facial tissues. 

Additionally, the brand should be used as an adjective and capitalized when advertised in a full sense, for example, “TRADEMARK” brand or “TRADEMARK” followed by the “generic name”. And when mentioning the trademark alone, it should be followed by the symbols ™ or ®.

Policing the use of the trademark: This can be achieved by educating not only the consumers but also the internal staff, the licensors, franchisees, and distributors, on the correct usage of the trademark. Furthermore, the way the trademark is perceived by the public must be monitored to intervene when necessary, a famous instance of this will be when The Swedish Language Council suggested including the word “ogooglebar” in the dictionary, which translates to “ungoogleable” and refers to certain things that cannot be found on the internet using a search engine. Google opposed the inclusion of this word as it threatens the way their trademark is perceived by the general public, claiming this makes the trademark synonymous with search engines. Consequently, the Council removed this word from their suggestion list for new words to be added to the dictionary. This is an example of how trademark owners should be vigilant on how the public perceives their trademark and take action when this perception is compromised.

Expanding the line of products or services of the trademark: If possible, it always advised for trademarks owners to introduce another line of products, so the trademark is not linked and trapped in representing the source of one product only, a lot of well-known brands are far from the danger of trademark genorcide because they provide different lines of products so it’s highly unlikely that the public will start using the trademark to describe a certain product as it also an identifier of many other products, an example of this are “Samsung” having wide range of products such as mobile devices, computers, home appliances, medical equipment and so much more. “Gucci” is another example of a trademark that offers diverse lines of products such as handbags, footwear, jewelry, and fragrance.

In conclusion, trademark genericide is a very important concept that business owners must be aware of and its causes, so they know how to enhance their marketing campaigns by including strategies to avoid it. This is essential whether you, as a business owner, have just started your business, or your trademark has started gaining traction, or if your trademark is very popular, it is already on its way to genericide.

References:

James A. Heilpern, William G. Eggington, Earl Kjar Brown, and Zachary D. Smith, Going Generic: A
Linguistics Approach to Genericide in Trademark Law, 50 BYU L. Rev. 81 (2024).
Available at: https://digitalcommons.law.byu.edu/lawreview/vol50/iss1/8

Bevan, Richard B., “Trademarks and Genericide: A Corpus and Experimental Approach to Understanding
the Semantic Status of Trademarks” (2021). Theses and Dissertations. 9332.
https://scholarsarchive.byu.edu/etd/9332

Baroni, A. C., & Palma, M. P. (n.d.). Trademark generification: A cross-country comparison of legal regimes regarding the loss of the exclusive right (Research paper).

Kim, A., Graentzdoerffer, L., & Pearce, E. (2019, May 1). Best practices to avoid genericide. International Trademark Association. https://www.inta.org/

John D. Ingram, The Genericide of Trademarks, 2 Buff. Intell. Prop. L.J. 154 (2004).
Available at: https://digitalcommons.law.buffalo.edu/buffaloipjournal/vol2/iss2/4

Metzger, J. (2023, March 21). Too much of a good thing: How genericide sends trademarks to the graveyard. University of Cincinnati Law Review Blog. https://uclawreview.org/2023/03/21/how-genericide-sends-trademarks-to-the-graveyard/

Wadhwa, K. (n.d.). Trademark genericide: When brands fall prey to their own fame. Indian Journal of Integrated Research in Law, 2(4). https://ijirl.com/