Brand Funeral: Trademarks now Generic Terms

When you need to blow your nose, there’s a good chance you ask for a Kleenex, even if the box being handed to you doesn’t bear the Kimberly-Clark-owned Kleenex logo. When you use a brand name as a generic term, you’re using a proprietary eponym, or, more simply, a generic trademark. You’re probably familiar with this phenomenon, but there are more examples of it than you might realize.

The process of which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time when a mark is not used as a trademark (i.e. when it is not used to exclusively identify the products or services of a particular business); when a mark was neglected; when a mark was used and promoted in the wrong manner; or when the trademark owner does not enforce its rights through actions for passing off or infringement under Intellectual Property Rights.

A trademark is said to be generic when it began as distinctive but has changed in meaning to become generic. It typically becomes genericide when the products or services with which they are associated with have acquired substantial market dominance such that the primary meaning of the generic trademark becomes the product or service itself rather than an indication of source for the product or service; to an extent that the public thinks the trademark is the generic name of the product or service.

You may be aware of Kleenex, Velcro and ChapStick, but what about escalator? Or bubble wrap? Frisbee, zipper, trampoline? All of these are (or were) trademarks of companies whose products were so successful that they came to represent an entire category. And it can actually cause quite a problem for those companies.

“Over time, a brand can be so famous and so ubiquitous that people associate that with the action,” said Michael N. Cohen, an intellectual property lawyer in Los Angeles. “In everyday usage, people start using that term.”

You may think nothing of it when you ask for a Band-Aid to cover a cut or scrape. But a company like Johnson & Johnson, which makes the world’s most famous brand of adhesive bandages, might have reason to worry because — theoretically, anyway — that degree of easy familiarity could put it in jeopardy of losing its trademark.

“When something becomes so pervasive in everyday society as a result of its own fame, there’s an argument that it no longer represents the brand, it almost represents the action,” Mr. Cohen said. “So as a result of that, in trademark law, you cannot trademark things that are descriptive or generic in nature.”

Bayer Co. v. United Drug Co. was a seminal case in which Bayer lost its trademark for Aspirin to what experts now refer to as “genericide.” That 1921 case set the table for the modern standard that courts currently follow: If a brand name is understood by the public to refer broadly to a category of goods and services rather than a brand’s specific good or service, a company may be at risk of losing its trademark. Escalator, cellophane, and laundromat have all lost their trademark status to genericide.

There are still plenty of familiar names that hold their trademarks. Bubble Wrap is a trademark of Sealed Air, Frisbee remains a trademark of Wham-O, and Velcro is trademarked by the company of the same name. There are generic terms for all these products, but when was the last time you packed a box with inflated cushioning, tossed a flying disc or attached anything using hook-and-loop fasteners?

Some companies are fighting back against the generic use of their trademarks. For example, when you see a company using its brand as an adjective (“Use a Xerox copier”) rather than a verb (“Go Xerox this”), it is trying to prevent genericization. Companies may also avoid using the plural form of the trademarked word (favouring “Lego bricks,” for instance, over “Legos”). They may even use a distinctive typeface to make the trademark stand out.

Other brands have taken more conspicuous approaches.

“Some big companies have engaged in advertising campaigns to let the public be aware that their name is actually a trademark,” Mr. Cohen said. “Xerox had an advertisement that was in a magazine that literally said, ‘If the trademark is misused, it could come undone … please help us ensure it doesn’t.’”

Xerox still has its trademark, as do Rollerblade and Clorox, both of which ran similar campaigns. Velcro even made a music video about the issue.

It’s a paradox that brands with fanciful names that don’t otherwise exist in common language have stronger cases when applying for a trademark. But this strength can become a weakness when it comes to protecting the trademarks against genericization.

“Some of the names that are made-up words are the ones susceptible to being genericized, because there is no other way to describe it,” Mr. Cohen said. “They became so famous; people may accidentally associate that name with the action — like Xerox.” Mr. Cohen noted that it’s possible for a company to recapture a trademark if it can get consumers to associate the brand name with its specific product rather than the product category at large.

Ultimately, it’s unlikely that you care about the intellectual property struggles of large corporations, and you’ll probably keep saying “Kleenex” when you really just want a tissue. But those companies are fighting hard to make sure you don’t.

Public perception and understanding is the key for determining whether a registered trademark has lost its source-denoting value and become generic. While evaluating public perception, a broad set of factors should be considered including availability of alternative terms, the trademark owner’s use and promotion of the mark etc.

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