April 28, 2022
The Trademarks Act of 1999 allows for the registration of trademarks, which are markings that may be graphically displayed and differentiate one person’s goods and services from those of another. Section 9 of the Act makes it abundantly clear that a mark must be sufficiently distinctive to be registered. However, registered trademarks are subject to general usage and eventually become part of the public domain. As a result, the trademark owner loses all rights to the mark.
Trademark Genericide is the loss of trademark rights when a phrase becomes widely used and customers begin to associate it with a specific product rather than its source. When a trademark becomes a product’s “common descriptive name”, the trademark owner loses his or her exclusive right to use it.
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What is a Generic Trademark?
Generic trademarks are phrases often used to identify products or services, such as “shoes” for a shoe company. No one may register generic trademarks since they describe a product. These trademarks are not protected in any way.
Brands can utilize a variety of trademarks, but those that fall under the generic umbrella provide no protection. For example, a local shoe business that simply labelled itself “Shoe Store” would not be entitled to use that identity.
Any brand may freely utilize these phrases in creating, marketing, promotion and other parts of making and selling their products or services since they define conventional vocabulary for specific sectors. Genericization can cause strong trademarks to become generic over time. This procedure makes it possible for anybody to use the trademark without permission.
Examples of Generic Trademarks
Aspirin, Cellophane, Zipper, Kleenex, Thermos, Popsicle, Jeep, Colgate, XEROX, Surf, Cadbury and more prominent trademarked names have now become generic due to improper and on-going public usage.
Aspirin: Acetylsalicylic acid is found in aspirin, a pain reliever. In 1917, Bayer AG trademarked the name by combining two German terms. In 1919, aspirin lost its trademark status, and it is currently used generically.
Cellophane: Cellophane is a made-up word formed by combining the words “cellulose” and “diaphane” (transparent). In 1912, chemist Jacques E. Brandenberger registered the phrase as a trademark. Cellophane is now a generic term in the United States, while still a trademark in other countries.
Escalator: In 1900, the Otis Elevator Company trademarked the phrase. When the USPTO found that Otis had used the word generically in its patents, “escalator” became a generic term.
Heroin: In 1898, Bayer AG trademarked the term heroin. This drug’s name is derived from the German word “heroisch,” which means “strong.”
Linoleum: When Frederick Walton invented Linoleum in 1864, he never trademarked it. Genericide spread quickly: by the late 1870s, the term had become widely accepted.
Reasons Behind Trademark Genericide
Trademark genericide has a simple explanation. The trademark gets genericized as a result of the public’s continued usage of the word to refer to a specific product rather than its source. The more popular a product is, the more likely it will die a generic death.
There are a variety of reasons why a trademark becomes generic over time. The first possibility is that the product was unique and had monopolistic market power, and hence the public connected the brand with the good rather than the source of the good. The word “genericide” is occasionally used to describe a process in which a trademark owner actively contributes to the degradation of the trademark’s uniqueness, sometimes inadvertently. Another cause for trademark genericide is the absence of an acceptable alternative word for the good, as demonstrated by the lack of a suitable substitute name for the product.
‘Escalator’ is a name used to describe a type of escalator. The word ‘escalator’ is snappy and imaginative, and it’s a lot simpler to pronounce than the word ‘escalator,’ which refers to a moving stairway made by the Otis Elevator Company. Another cause of trademark genericide is firms’ contradictory behaviour when it comes to their trademark. Companies want their products to be well-known, but they don’t want the public to mistakenly associate the brand with the product rather than the source. Trademarks such as Kleenex, Trampoline, and others have become generic phrases due to inept promotion and insufficient control methods.
How to Protect Your Trademark to be Genericide?
Trademark protection, brand value, and profit are lost when a brand name becomes generic. A brand can take a few steps to avoid genericization:
You can add the word “brand” after the trademark on the packaging of the product
Poland Spring, Lysol, and Deer Park are just a few examples of brands that adopt this method.
- Add a short description.
By combining your trademark with a descriptive term/phrase, you may protect your brand by indicating that the brand name should not be used as the product’s generic name.
A number of brands have utilized this method. “Kleenex brand tissues” is printed on Kleenex packaging, whereas “Jell-O® brand gelatin” is printed on Jello’s. Other examples are “Play-Doh – modelling substance” and “Via from Starbucks – ready brew.”
- Make a precise plan.
It’s critical to decide early on how you and your workers will use the trademark and when to use the proper sign (TM or ®).
Never use your trademark as a verb or a noun (for example, “to google”); instead, use it as an adjective followed by a generic word (“a Ferrari car”). Make the following term plural, not the trademark itself, if you need to utilize your trademark in the plural form (for example, “Fanta drinks”, not “Fantas”). Also, unless the trademark is possessive (“McDonald’s®”), don’t use it in a possessive form.
- Spread your business
Genericization can be avoided by expanding a brand’s product portfolio. The Band-Aid trademark was initially intended to be used just for sticky bandages, but as the term became a generic name, the company responded by extending its business. With the same name, Band-Aid now distributes foot care items as well as germ-killing medications.
- Don’t advertise the trademark much.
The use of the phrase “to google” to refer to an online search has been discouraged by Google. Tylenol has launched a campaign to differentiate its brand of acetaminophen from other acetaminophen alternatives. These businesses may be able to use this advertising in court to show that their consumers continue to use their trademark in connection with their brand.
However, this method does not always work. For example, Xerox, a photocopier maker, spent millions of dollars promoting the broad word “photocopy” and advertising that Xerox is a registered trademark that you should only use in conjunction with a general phrase. It wasn’t enough: the Oxford English Dictionary now recognizes “to xerox” as a verb.
- Be cautious about infringement against your trademark.
- When competitors start utilizing the trademark to promote their products, this is known as genericide. You must defend your trademark against this type of usage, even if it involves suing competitors for infringement.
Keep a lookout for sites and media that are misusing your trademark. In this instance, contacting the media directly is preferable to bringing a lawsuit.
A brand owner should avoid picking a generic mark that cannot be registered while choosing a trademark and simultaneously keep the use of the mark as a brand in the mark and stop dilution of the mark by stopping infringers and copycats. The brand owner will need to defend its trademark from genericization with time and success. Following these principles will assist in maintaining the brand’s strength.
If you still have questions regarding generic trademark, feel free to contact us. We will be more than happy to assist our clients for their betterment.
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