The Price of Popularity: Losing Trademark Protection Through Genericide

|

If you asked someone for a Kleenex, would it confuse if they said: “sorry, I only have generic tissue paper.” If someone asked you to Google the word “genericide,” would you worry about upsetting them if your browser defaulted to using Bing or Yahoo?

While you, as a consumer, might be making a general request for tissue paper or performing an internet search in the scenarios above, companies care quite a bit about how you use their trademarks. Although you might think that it’s a good sign for consumers to use their trademarked products in a general sense, this could mean trouble for trademark owners. This blog discusses the pitfalls of marketing your product so effectively that the resulting ubiquity in its awareness results in losing trademark protection – also known as “genericide.”

What Does Trademark Protect?

Trademark is a form of intellectual property where a word, phrase, symbol, or design is used to identify and distinguish the source of a company’s goods from others. For example, logos and brand names can qualify for trademark protection.

Trademarks are valuable for companies as they’re used to build brand awareness and develop goodwill and a good business reputation for specific products or services. That is why trademark owners have the exclusive right to use their trademarks. However, one of trademark law’s lesser-known functions is also its most important one: to protect the consumer public.

When the public closely associates a product with a trademark, it is important to prevent lower-quality knockoffs from hopping on its popularity. Otherwise, consumers would be tricked into spending money on a substandard version of what they’re expecting – sometimes to the point of endangering their safety.

Accordingly, the main crux of a trademark infringement claim is determining whether the alleged infringing mark presents a likelihood of confusion with the protected mark. Simply put, a mark infringes on another person’s trademark rights if people would mistakenly believe that the company with the legitimate trademark produced the goods or service associated with the alleged infringing mark.

The federal government is in charge of regulating and enforcing trademark law. The United States Patent and Trademark Office (USPTO) receives and reviews countless trademark applications each year. There is even a special trademark court for determining basic trademark infringement claims.

What Are the Requirements for a Trademark?

Under federal law, not any old word, phrase, or symbol can garner trademark protection. A valid, enforceable trademark must be a fanciful, arbitrary, or suggestive word, phrase, or symbol. For example, Sprite can be considered an arbitrary or fanciful mark because it does little by way of describing the associated product or its properties. In contrast, Coca-Cola is a suggestive mark because it alludes to the product’s ingredients and class of product to which it belongs: “coca,” referring to coca leaves; and “cola,” referring to cola-type carbonated beverages.

Marks that are descriptive and generic cannot acquire trademark protection. This rule is born from practicality as enforcing descriptive or generic marks would not be feasible. For example, someone cannot register the word “beer” for a beer product. It would not be fair or practical to give someone the right to use “beer” for their product while excluding others from using it with their beer products.

What Is Genericide?

However, sometimes a trademark that begins as a fanciful or suggestive mark can become generic over time. This phenomenon occurs when the public’s association between a trademark and the type of product with which it is associated becomes so popular that consumers regularly use the trademark as a generic reference to all similar products.

When the use of a trademark as a generic reference becomes so ubiquitous among the consumer public, the USPTO cannot reasonably enforce the mark against other infringing uses. As a result, the mark loses protection because it has acquired generic meaning. This dynamic is the basis of genericide.

Examples of genericized marks include:

  • Kleenex
  • Xerox
  • Band-Aid
  • Aspirin
  • Thermos
  • ChapStik

How to Avoid Genericide

To prevent genericide, companies should develop policies with vendors, retailers, and affiliates governing the use of their trademark. Understandably, Google is infamous for having a strict policy with its partners regarding the use of its trademarks.

You can avoid genericide by following these guidelines:

  • Use the generic term with the trademark (e.g., Tic-Tac mints);
  • Attach the ® symbol to registered trademarks and the ™ symbol with unregistered marks to notify consumers about its protected status;
  • Capitalize the trademark to distinguish it as a proper name or noun;
  • Use the mark as an adjective (e.g., Google search)
  • Do not use the trademark as a noun;
  • Do not use the trademark as a verb (e.g., Shannon “Googled” herself online);
  • Use the trademark on a product line instead of a single product; and
  • Correct and educating others regarding the proper use of the trademark.

Sound Legal Representation for Businesses in California

Having a business can be a major challenge. However, you don’t have to sift through every applicable law and regulation yourself. At Allen, Semelsberger & Kaelin LLP we have the training and experience to help you ensure your California business operations comply with the law. We also provide effective legal representation to prevent other companies from engaging in unfair business practices, like trademark infringement.

For more information about how we can assist you and your business, call Allen, Semelsberger & Kaelin, LLP at (888) 998-2031 or contact us online today.