Overview
A trademark is a recognizable sign, term, or symbol that can be used to identify and set one good or service apart from another. It might be a word, logo, sound, color, or slogan that aids in connecting a good or service to the business that produces or offers the good or service in question. Having said that, a trademark must be sufficiently distinctive to serve as a source of identification and to make an impression on customers. This distinctiveness can either be inherent in the trademark or gained via continued usage. Ironically, though, these well-known trademarks often lose their distinctiveness and become generic as soon as people start to associate them with other products or classes of products rather than the source of them.
Read further to know more!
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 labeled itself “Shoe Store” would not be entitled to use that identity.
Since the generic words are common to trade or describes the goods and services without putting any imagination, all businesses should be free to utilize such words/ marks in the course of their business.
Why can’t a Generic Term obtain Trademark Protection?
Generic terms such as ‘computer’ or ‘perfume’ for the descriptive products can’t obtain trademark protection or be registered as a trademark because other people also have the right to use generic terms for describing the products they are selling. Furthermore, giving trademark protection to generic terms would restrict competition in the world among brand owners and individuals, and would also make the English language lose its essence. Adding a “.com” or “.org” suffix to a generic term isn’t a possible way of transforming generic terms into a trademark. For example, “Hotels.com” had filed a Trademark Application to register its brand name as a trademark, but the Federal Court in the US had dismissed its application for the same. Nevertheless, it is possible to combine a generic term or mark with other words to get the trademark registered.
Whereas, there also comes a situation when a mark which was distinctive, arbitrary or fanciful at a point of time but due to its overwhelming popularity and use over the time, the mark has become a synonym to the goods. These marks are called Genericide marks.
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.
Why does Genericide of the Trademark happens?
Having a popular and well-known trademark has its downside too, as there is a greater chance for them to lose its exclusivity and turn generic. For eg, Instant Noodles became the meal of choice for children as well as the adults with coming of Maggi in the market. Now we have came to be in such a situation where Maggi has become synonyms to instant noodles. Same is for google, it is no longer an “internet/ online search” but we ask people to just “google it”.
Organizations, businesses, and companies must make earnest efforts to safeguard their trademarks. But sometimes due to overwhelming response from the consumers and the boost to its popularity and use the Companies have to face consequence such as it being Genericide.
Few Reasons for the same are:
1. Using of the mark as a verb or a noun strongly affects the strength as the same slowing becomes part of the vocabulary at an extent where it is not possible to stop everyone.
2. Mark being used for a first of a kind product: Xerox, Escalator, Dumpster, etc are just few examples which are enough to explain how the first or sole creator of a new product or service has to work harder in order to promote its mark and goods but to also protect it from being genericide.
3. Improper marketing and promotion: Companies and business who themselves starts using their trademark as a noun to promote and market the goods under it. It is condemned by the courts to prevent the mark from being the indicator of its goods or services rather than as a distinguishing feature to determine its origin.
4. Increase of Social Media and Online Promotion: Due to everything being available online to anything getting popular if played with the algorithm right sometimes, the users of social media sometimes act as a bane as the people who post content having a heavy influence on their flowers can highly impact how they use the mark. For. Eg. The creators and designers using the term “lets photoshop it” or that this creation is “photoshopped”
How Can You Protect Your Trademark From 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:
1. Combine your trademark with the generic name of the goods or use your mark as an adjective so that when the mark is used as a whole it cannot be made out as a noun.
2. Continuously monitor the mark and restrict and protect your mark from being misused. The IPAB in the case of B.V Ilango vs. Rank Xerox Ltd. Decided in 2012 held that “if a company or brand had taken extensive measures to rectify and police the incorrect usage of their trademarked term including sending cease and desist notices, it will not be considered as a generic term.”
3. Issue guidelines of use of the trademark taking proactive measures as to how to mention the same level of protection as it was once granted.
Ultimately, there are two perspectives on the popularity of trademarks. As vital as it is to make a trademark well-known among customers so that it becomes a household brand, it is equally crucial to take the necessary precautions to preserve the rights of the proprietor by making sure that the aforementioned trademark does not fall victim to genericization.
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.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
