Protect Your Mark from Genericide

By: ​Brittany Hamner

Genericide is when a protectable trademark becomes generic.  Courts have defined “generic” as “the genus of which the particular product or service is a species.” Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011, 1014 (9th Cir. 1979).  A generic term is one which describes what the product or service is, and thus is not protectable under trademark law as its use would prevent others from describing the good or service in it of itself.
 
In the case deeming ASPIRIN generic in the United States, the late Judge Learned Hand set forth a standard for determining whether a mark has become generic: 

The single question, as I view it, in all these cases, is merely one of fact: What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, them [sic], I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed, and he cannot say that, when the defendant uses the word, he is taking away customers who wanted to deal with him, however closely disguised he may be allowed to keep his identity. 

Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921). 
 
In addition to aspirin for headache medicine, all of these generic words were once exclusive trademarks:
 
•       Cellophane for “transparent cellulose film.”
•       Murphy Bed for a fold-up wall bed.
•       Thermos for an insulated beverage container.
•       Yo-Yo for the toy.
•       Escalator for the mechanical stairs.
•       Flip Phone for smartphone with two sections that fold
•       Laundromat for coin laundry shop
 
Genericide can devastate a company’s entire intellectual property portfolio.  For example, Google recently faced a threat of genericide for use of its mark to describe searching the web.  the Ninth Circuit, the court held that “google” was not a generic term and was a protectable trademark, re-affirming that even if a trademark is widely-used by the generic public as a verb, that does not mean that the trademark is considered generic.
 
Similarly, other marks were once on their way to becoming generic include XEROX, JEEP, BAND-AID, and KLEENEX. To prevent these trademarks from becoming generic, each trademark owner ran an aggressive ad campaign to educate consumers to view its trademark as a source identifier as opposed to a common name for its goods and/or services.
 
In order to avoid genericide and protect your mark, owners should:
•       focus on educating the consumer that their mark is the source of the product, not the product itself
•       establish guidelines for the use of their mark, such as determining how their trademark will be used and displayed in commerce – whether it will always carry the ® or ™ signs, or whether it will be used as a verb or noun
•       advertise the trademark or brand name along with the general term, instead of just the trademark. For example, “Jell-O gelatin” or “LEVI’s jeans
•       police the use of the mark and its use in domains as well as in the media
•       describe the mark without including the name of your mark