| Intellectual property law |
|---|
| Primary rights |
| Copyright · authors' rights · related rights · moral rights · patent · utility model · trademark · geographical indication · trade secret |
| Sui generis rights |
| Database right · indigenous intellectual property · industrial design right · mask work · plant breeders' rights · supplementary protection certificate |
| Related topics |
| Societal views · orphan works · public domain · more |
A generic trademark, also known as a genericized trademark or proprietary eponym, is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation ("secondary meaning") as intended by the trademark's holder. Using a genericized trademark to refer to the general form of what that trademark represents is a form of metonymy.
A trademark is said to fall somewhere along a scale from "distinctive" to "generic" (used primarily as a common name for the product or service rather than an indication of source). Among distinctive trademarks the scale goes from strong to weak:
A trademark is said to be genericized when it began as distinctive but has changed in meaning to become generic. A trademark typically becomes "genericized" when the products or services with which it is associated have acquired substantial market dominance or mind share such that the primary meaning of the genericized trademark becomes the product or service itself rather than an indication of source for the product or service to such an extent that the public thinks the trademark is the generic name of the product or service. A trademark thus popularized has its legal protection at risk in some countries such as the United States, as unless the owner of an affected trademark works sufficiently to correct and prevent such broad use its intellectual property rights in the trademark may be lost and competitors enabled to use the genericized trademark to describe their similar products.[1][2][3]
Genericization or "loss of secondary meaning" may be either among the general population or among just a subpopulation, for example, people who work in a particular industry. Some examples of the latter type from the vocabulary of physicians include the names Luer-Lok (Luer lock) and Port-a-Cath (portacath), which have genericized mind share (among physicians) because (1) the users may not realize that the term is a brand name rather than a medical eponym or generic-etymology term, and (2) no alternate generic name for the idea readily comes to mind. Most often, genericization occurs because of heavy advertising that fails to provide an alternate generic name or that uses the trademark in similar fashion to generic terms. Thus, when Otis Elevator Company advertised that it offered "the latest in elevator and escalator design," it was using the well-known generic term elevator and Otis's trademark "Escalator" for moving staircases in the same way. The Trademark Office and the Courts concluded that, if Otis used their trademark in that generic way, they could not stop Westinghouse from calling its moving staircases "escalators", and a valuable trademark was lost through "genericization."
The pharmaceutical industry affords some protection from genericization due to the modern practice of assigning a generic name for a drug based upon chemical structure. Examples of genericization before the modern system of generic drugs include aspirin, introduced to the market in 1897, and heroin, introduced in 1898. Both were originally trademarks of Bayer AG.
Contents |
A few examples of trademarks that have lost their legal protection in the US are:
While Linoleum, coined by its inventor and patent holder Frederick Walton, is the first product term ruled by a court as generic, it was never used as a trademark.[9]
Other trademarks have come close to genericization, but have been rescued by aggressive corrective campaigns. Such is the case with Xerox for photocopiers, Plexiglas for shatter-resistant polymer glass, Kleenex for facial tissues, Band-Aid for adhesive bandages, and others. A trademark owner takes a risk in engaging in such a corrective campaign because the campaign may serve as an admission that the trademark is generic. So, the owner must irreversibly commit to continuing the campaign until relatively sure the trademark has achieved primary meaning as a trademark rather than as a common name of the product or service.
Whether or not a mark is popularly identified as genericized, the owner of the mark may still be able to enforce the proprietary rights that attach to the use or registration of the mark, as long as the mark continues to exclusively identify the owner as the commercial origin of the applicable products or services. If the mark does not perform this essential function and it is no longer possible to legally enforce rights in relation to the mark, the mark may have become generic. In many legal systems (e.g., in the United States but not in Germany) a generic mark forms part of the public domain and can be commercially exploited by anyone. Nevertheless, there exists the possibility of a trademark's becoming a revocable generic term in German (and European) trademark law.
The process by which trademark rights are diminished or lost as a result of common use in the marketplace is known as generification or genericide. This process typically occurs over a period of time in which a mark is not used as a trademark (i.e., where it is not used to exclusively identify the products or services of a particular business), where a mark falls into disuse entirely, or where the trademark owner does not enforce its rights through actions for passing off or trademark infringement.
One risk factor that may lead to genericide is the use of a trademark as a verb, plural or possessive, unless the mark itself is possessive or plural (e.g., "Friendly's" restaurants).[10] Some trademarks are so well-known that they are understood as trademarks even when used generically, and the generic use is deliberately made in ads to emphasize that fact ("COKE is it" or "When you say BUDWEISER, you've said it all.").
Trademark owners will naturally seek to maximize the popularity of their marks. However, generic use of a trademark presents an inherent risk to the effective enforcement of trademark rights and may ultimately lead to genericide.
Trademark owners may take various steps to reduce the risk of genericide, including educating businesses and consumers on appropriate trademark use, avoiding use of their marks in a generic manner, and systematically and effectively enforcing their trademark rights. If a trademark is associated with a new invention, the trademark owner may also consider developing a generic term for the product to be used in descriptive contexts, to avoid inappropriate use of the "house" mark. Such a term is called a generic descriptor, and is frequently used immediately after the trademark to provide a description of the product or service. For example, "Kleenex tissues" ("facial tissues" being the generic descriptor) or "Velcro Brand fasteners" for Velcro brand name hook-and-loop fasteners.
Another common practice amongst trademark owners is to follow their trademark with the word brand to help define the word as a trademark. Johnson & Johnson changed the lyrics of their Band-Aid television commercial jingle from, "I am stuck on Band-Aids, 'cause Band-Aid's stuck on me" to "I am stuck on Band-Aid brand, 'cause Band-Aid's stuck on me." Google has gone to lengths to prevent this process, discouraging publications from using the term 'googling' in reference to web searches. In 2006, both the Oxford English Dictionary[7] and the Merriam Webster Collegiate Dictionary[11] struck a balance between acknowledging widespread use of the verb coinage and preserving the particular search engine's association with the coinage, defining google (all lower case, with -le ending) as a verb meaning "use the Google search engine to obtain information on the Internet".
Where a trademark is used generically, a trademark owner may need to take special proactive measures to retain exclusive rights to the trademark. Xerox corporation was able to generally prevent the genericide of its core trademark[12] through an extensive public relations campaign advising consumers to "photocopy" instead of "xerox" documents.
One example of an active effort to prevent the genericization of a trademark was that of the LEGO Company, which printed in manuals in the 1970s and 1980s a request to customers that they call the company's interlocking plastic building blocks "'LEGO bricks', 'blocks' or 'toys', and not 'LEGOs'." While this went largely unheeded, and many children and adults in the U.S. referred to and continue to refer to the pieces as "LEGOs", use of the deprecated term remained largely confined to the LEGO Company's own products – and not, for example, to Tyco's competing and interchangeable product – so genericization of the LEGO trademark did not occur.
Since 2003, the European Union has actively sought to restrict the use of geographical indications by third parties outside the EU by enforcing laws regarding "protected designation of origin".[13] Although a geographical indication for specialty food or drink may be generic, it is not a trademark because it does not serve to identify exclusively a specific commercial enterprise and therefore cannot constitute a genericized trademark.
The extension of protection for geographical indications is somewhat controversial because a geographical indication may have been registered as a trademark elsewhere. For example, if "Parma Ham" were part of a trademark registered in Canada by a Canadian manufacturer, ham manufacturers actually located in Parma, Italy might be unable to use this name in Canada. Bordeaux wines, cheeses such as Roquefort, Parmesan, and Feta, Pisco liquor, and Scotch whisky are examples of geographical indications.
In the 1990s, the Parma consortium successfully sued the Asda supermarket chain to prevent it using the description "Parma ham" on prosciutto produced in Parma but sliced outside the Parma region.[14]