Author: Maria Silvia Martinson, a lawyer at RestMark METIDA
Upon hearing the word Escalator, we unsurprisingly think of an escalator, any escalator really, and not necessarily „moving stairs“ introduced by the Otis Elevator Company. Similarly, the words Yo-Yo, Thermos, Frisbee and even Heroin might not ring a bell as brands belonging to a certain company, but rather spring to mind a variety of specific goods completely independent of their creator.
All of the aforementioned terms – Escalator, Yo-Yo, Thermos, Frisbee, Heroin – have once been widely recognised and highly successful trademarks. However, by this point in time, the owners bear no claim to the signs anymore as they have been stripped of their exclusive rights due to genericide, whether around the globe or at least in some jurisdictions.
By definition, genericide – one of the worst fears of successful trademark owners – is the process of a distinctive trademark turning into a generic term for some goods or services. Genericide causes trademarks to lose their distinctiveness, allowing the marks to become interchangeable with the name of the product or, in some cases, even become the name of the product (e.g. escalator).
But is it not the brand owner’s biggest wish to be so well-known that whenever consumers come across their trademark, they immediately think of the product behind the trademark and vice versa?
In a nutshell, that is the irony of genericide. Nowadays, brands are often the most valuable assets of a company and therefore all brand owners wish their brands to be highly recognised among consumers. However, on occasion, a brand can become so well-known that the initial generic term will completely be forgotten and the trademark starts to be used as a product identifier instead. For example, when did you last use „insulated beverage container“ instead of a Thermos?
And whenever a trademark becomes a product identifier, it can no longer function as a trademark. The reason for it being that, in its essence, a generic term is the absolute opposite of a trademark. A generic term acts as a product identifier by being the name or synonym of the good or service itself, whereas the aim of a trademark is to distinguish the owner’s goods and services from its competitors on the market, thereby functioning as a source identifier instead of a product identifier.
If the trademark functions as a product identifier instead, the trademark owner’s rights can be challenged. In instances where the owner indeed loses their rights, competitors can easily jump in and make use of the generic term newly available for use by free-riding on its hard-earned reputation.
Fortunately, the demise of a highly successful trademark by way of genericide is not inevitable. Although the threshold and methodology of assessing whether the trademark functions as a product or source identifier is somewhat different from country to country, there are some universal rules to be followed when using your trademark that can help prevent genericide on every continent:
- Make your trademark stand out.
There are various ways to go about this, but the idea behind it is to notify both consumers and competitors that you are indeed using the sign as a source identifier. The trademark should be made noticeable from the rest of the text on packaging, in advertisements and in other materials, including articles and books it is mentioned in.
One of the best options for it is using a registered trademark symbol ® if your mark is registered on the relevant territory and a TM symbol if you are using an unregistered mark as a trademark. Other alternatives include using colour variations, capital letters or design.
- Use the trademark as an adjective to a general term.
If consumers are used to seeing and hearing the trademark used together with a general term (e.g. Kleenex® tissues), they are inclined to perceive the mark as a source identifier, thereby refraining from using it as a general term or synonym. In instances where the mark is used as a noun (e.g. several pairs of Nikes) or a verb (e.g. I googled something), it is more likely to enter into common use as such and thus lose its distinctiveness in the long run.
It must be noted, however, that verb use alone does not automatically prove genericide in cases where a connection to the original trademark still exists. For example, in a recent highly prominent case Elliott v. Google (United States Court of Appeals, 9th Cir. 2017), Elliott claimed that Google had become a generic term due to being regularly used as a verb, yet the court eventually still sided with Google. But it must be kept in mind that common use of the mark as a verb or noun can still erode the trademark’s distinctiveness and be one of the arguments to prove genericide, thus it is safer for the trademark owner to promote the use of the mark as an adjective to a general term.
- Object to incorrect use of the mark.
This includes objecting to all incorrect use, either in advertising, books, articles or anywhere else. For example, the word ogooglebar was to be added to the Swedish lexicon as a new word in 2012, meaning „something that cannot be found on the web using a search engine“. However, the lawyers at Google requested for the term to be altered to mean „something that cannot be found on the web using Google®“. Finally, the term was pulled from the lexicon altogether.
- Introduce a generic term for an innovative product.
Whenever a highly innovative and never-before-seen product is launched, a generic term must be introduced in addition to the trademark, otherwise the trademark will become the name of the product itself and is likely to be used as such in the future (again, think of escalators).
All of these basic rules boil down to a very simple principle: make sure to use your trademark as a trademark. If you don’t, also don’t expect others to.
This essentially means that, as a trademark owner, you have to use the trademark as a source identifier yourself and not confuse the relevant consumers by using the trademark as a generic term in any way. The best way to go about this is to carefully formulate rules for how the mark is to be used and also share said rules with your business partners, distributors and others who make commercial use of the mark.
However, if genericide has already begun, there are still a few options to save your trademark from its demise. One of them is starting anti-genericide advertising campaigns that have proven to be quite successful in the past, such as photocopier firm Xerox did in 2003 by stating, „When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache.“ This strategy raises awareness of the fact that the commonly recognised term is indeed still a trademark, perhaps leading the consumers to start using it correctly.
The last safeguard in place to help your trademark on the straight and narrow is legal regulation itself. For example, in the European Union, the person challenging an EUTM registration by stating it has become a generic term has not only the burden of proof to show that the term has become generic, but they also have to prove that genericide has happened either in consequence of acts or inactivity of the trademark’s owner. This means that if you make good use of the mark and keep in mind the aforementioned universal rules, your trademark is likely to live another day.