TRADEMARK GENERICIDE: THE PRICE OF BECOMING TOO POPULAR

INTRODUCTION

Have you heard people say, “just google it”? The word ‘Google’ has become so popular and common that it is used to denote the act of running an online search on any search engine. Even though Google legally owns its trademark, it has become a verb for the general masses. Trademarks are more than just logos or brand names, they represent the identity and reputation of a business. Sometimes popularity becomes a bane instead of boon and the mark is used as a general term for the product itself. This phenomenon, known as trademark genericide, has been explored in this article.

WHAT IS A TRADEMARK?

Trademarks are a form of intellectual property which identifies goods or services and distinguishes them from those of competitors. It is an important asset for any business helping it protect its brand name and logo. A trademark can be any word, phrase, symbol, design, or a combination of these things. They are distinctive and recognisable signs that help consumers associate a product or a service with a particular company. Think of them as a company’s signature in the marketplace. India’s trademark law is governed by the Trademarks Act, 1999.[1] This act protects trademarks, prevents fraudulent use, and regulates registration. It also provides penalties for infringement and remedies for those who are damaged.

TRADEMARK GENERICIDE

Distinctiveness is the main feature of any trademark. It bestows a distinctive character on the goods and services of the business. Ironically, over popularisation of the trademark among the greater masses makes it lose that distinctiveness.[2] This defeats a trademark’s entire purpose and leads to trademark genericide. The mark is now transformed into a ‘generic trademark’ which does not enjoy any benefits or protection. They describe a broad category of a product or service, making them ineligible for exclusive rights. Imagine trying to trademark “shoe” for footwear or “computer” for electronic devices, it would create a monopoly on the very words used to identify those products.

Genericide comes from the word ‘generic’. In its most basic sense, trademark genericide can be understood to happen when a trademark becomes generic. Generic terms are commonly used words, either in an ordinary or specialized sense, that denote a general category, class of things, product, or service. When a trademark is used to a point where the consumers begin to associate it to a particular product rather than its source or manufacturer, then the trademark is said to have become genericized, wherein it becomes the common descriptive name of a certain product. The trademark owner now no longer has the exclusive right over the use of the said trademark.[3]

The process of genericide involves several stages, often facilitated by the widespread and casual use of a trademarked term by the public, competitors, and even the media.[4]

CASE STUDIES

There are many such examples of famous trademarks that lost their uniqueness and were adopted as common household names.

1. Aspirin Originally owned by Bayer AG, ‘Aspirin’ specifically referred to the company’s acetylsalicylic acid product. Initially sold only to medical professionals, aspirin started losing its trademark when it started marketing to consumers. Over time, the term became widely associated with any pain reliever containing acetylsalicylic acid. In Bayer Co. v. United Drug Co.[5] 1921, Bayer lost its trademark in the United States, and ‘aspirin’ became a generic term.
2. Escalator It may be surprising to know that the word ‘escalator’ was once a trademark of the Otis Elevator Company. It was coined in the early 1900s for their newest moving staircase invention, which revolutionized transportation within buildings. As the device gained popularity in public spaces, the term began to be widely used to describe all moving staircases, not just those made by Otis. Due to this widespread usage and Otis’s failure to enforce its trademark, the term lost its uniqueness and association with the brand. In the 1950 case Haughton Elevator Co. v. Seeberger,[6] the United States Patent and Trademark Office (USPTO) ruled ‘Escalator’ as a generic term, allowing any company to use it. Today it is a common word for us, also found in the English dictionary.
3. Cellophane Dupont the inventor of ‘Cellophane’ developed a transparent, waterproof packaging material. The name was derived from two components namely cellulose and diaphane. Over time with its wide usage, the trademark became synonymous with any similar packaging material, regardless of the manufacturer. This widespread use eroded the distinctiveness of the brand. In the landmark case of DuPont Cellophane Co. v. Waxed Products Co. 1934,[7] the court agreed, ruling that ‘Cellophane’ had entered the public domain, and DuPont lost its trademark rights.
4. Zipper B.F. Goodrich Company were the first to coin the term zipper and trademark it for the interlocking toothed fastening device. They used it to refer to the zipper on their rubber boots. Initially, the term 'Zipper' referred specifically to Goodrich’s product. However, as the fastening device became widely used in various items like clothing, luggage, and sporting goods, the term began to be used generically, referring to all similar devices regardless of manufacturer. This widespread use led to the loss of trademark protection for the word in the case Sweet People Apparel, Inc. v. Zipper Clothing and it eventually became a generic term in the public domain.

AUTHOR’S NOTE

Brand owners spend a lot of time and money creating and protecting their trademarks. The legal system should tilt towards safeguarding brands and their unique identity. While it’s inevitable that some terms will enter the public lexicon, it’s crucial for businesses as well to take a more active and strategic approach to ensure their brands do not fall victim to genericide. They must reinforce proper usage through clear branding and public campaigns. In this rapidly evolving digital landscape, where terms can go viral in an instant, the risk of genericide will only increase. With the right precautions, brands can navigate this complex landscape without losing their distinctiveness.

CONCLUSION

Trademark genericide represents a big challenge for brand owners, taking away a company’s legal protections and valuable market position. While some brands have managed to retain market differentiation through their unique trademarks, others have faced irreversible losses of identity. The cases of brands like Google, Xerox, and Velcro illustrate that there is a very delicate balance between maintaining a distinctive trademark and navigating widespread consumer usage. Companies protecting their intellectual property need to watch for unauthorized use and instruct consumers about proper use. The increasing number of digital and worldwide interactions will only make genericide challenges keep on intensifying. Companies which maintain proactive trademark management strategies alongside adaptation techniques will achieve success in protecting their identity and securing market worth.

[1] The Trademarks Act, 1999, No. 47 of 1999, India Code, 1999 (India).

[2] Trademark Genericide: A Paradoxical Conundrum, IIPRD (Sep. 10, 2022), https://www.iiprd.com/trademark-genericide-a-paradoxical-conundrum/.

[3] Trademark Genericide, SELVAM & SELVAM (Oct. 31, 2021)

[4] Mohit Porwal & Vidhi Agrawal, Trademark Genericide in the Era of Social Media: Remedies and Repercussions, AUMIRAH, https://aumirah.com/trademark-genericide-in-the-era-of-social-media-remedies-and-repercussions/.

[5] Bayer Co. v. United Drug Co., 272 F. 505 (1921)

[6] Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950)

[7] DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir. 1936)