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Generic trademark

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"Genericide" redirects here. Not to be confused withGendercideorGenocide.
See also:List of generic and genericized trademarks
A sign in a supermarket using "Jell-O"generically, rather than"gelatin"
Intellectual property
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Ageneric trademark,also known as agenericized trademarkorproprietary eponym,is atrademarkorbrand namethat, because of its popularity or significance, has become thegeneric termfor, or synonymous with, a general class ofproductsorservices,usually against the intentions of the trademark's owner.

A trademark is prone to genericization, or "genericide",[1][2]when a brand name acquires substantialmarket dominanceormind share,becoming so widely used for similar products or services that it is no longer associated with the trademark owner, e.g.,linoleum,bubble wrap,thermos,taser.[3]A trademark thus popularized is at risk of being challenged or revoked, unless the trademark owner works sufficiently to correct and prevent such broad use.[4][5][6]

Trademark owners can inadvertently contribute to genericization by failing to provide an alternative generic name for their product or service or using the trademark in similar fashion togeneric terms.[7]In one example, theOtis Elevator Company's trademark of the word "escalator"was cancelled following a petition fromToledo-based Haughton Elevator Company. In rejecting an appeal from Otis, an examiner from theUnited States Patent and Trademark Officecited the company's own use of the term "escalator" alongside the generic term "elevator"in multiple advertisements without any trademark significance.[8]Therefore, trademark owners go to extensive lengths to avoid genericization and trademark erosion.

In subpopulations[edit]

Genericization may be specific to certain professions and other subpopulations. For example,Luer-Lok (Luer lock),[9]Phoroptor (phoropter),[10]andPort-a-Cath (portacath)[11]have genericizedmind shareamongphysiciansdue to a lack of alternative names in common use: as a result, consumers may not realize that the term is a brand name rather than amedical eponymor generic term.

In pharmaceuticals[edit]

Aspirin with and without trademark
Four boxes of medication on a store shelf above price tags. The two on the left are yellow with "Aspirin" in bold black type and explanatory text in English on the top box and French on the bottom. The two on the right are slightly smaller and white with the word "Life" in the corner inside a red circle. The text, in French on top and English below, describes the medication as "acetylsalicylic acid tablets"
Aspirinfor sale in Canada, next to generic store equivalent described as "ASA (acetylsalicylicacid) tablets ", since the trademark is still recognized there
Four plastic bottles of medication on another drugstore shelf above their price tags. The two on the left are yellow with the word "Bayer" prominent in black type; above small type describes the product as "genuine aspirin". On the left are two clear plastic bottles with the Rite Aid drugstore chain logo on their yellow labels, which describe the product as "pain relief aspirin".
Aspirin for sale in the U.S., where the store brand can also be sold as aspirin since the trademark was ruled generic a century ago

Pharmaceuticaltrade namesare somewhat protected from genericization due to the modern practice of assigningnonproprietary namesbased on a drug's chemical structure.[12]This circumvents the problem of a trademarked name entering common use by providing a generic name as soon as a novel pharmaceutical enters the market. For example,aripiprazole,the nonproprietary name for Abilify, was well-documented since its invention.[13][14][15]Warfarin,originally introduced as arat poison,was approved for human use under the brand name Coumadin.[16]

Examples of genericization before the modern system ofgeneric drugsincludeaspirin,introduced to the market in 1897, andheroin,introduced in 1898. Both were originally trademarks ofBayer AG.However, U.S. court rulings in 1918 and 1921 found the terms to be genericized, stating the company's failure to reinforce the brand's connection with their product as the reason.[17]

A different sense of the wordgenericizedin the pharmaceutical industry refers to products whose patent protection has expired. For example,Lipitorwas genericized in the U.S. when the first competing generic version was approved by the FDA in November 2011. In this same context, the termgenericizationrefers to the process of a brand drug losing market exclusivity to generics.

Trademark erosion[edit]

Main article:List of generic and genericized trademarks
Kawasaki Jet Ski

Trademark erosion,orgenericization,is a special case ofantonomasiarelated totrademarks.It happens when a trademark becomes so common that it starts being used as a common name[18][3][19]andthe original company has failed to prevent such use.[18][19]Once it has become an appellative, the word cannot be registered any more; this is why companies try hard not to let their trademark become too common, a phenomenon that could otherwise be considered a successful move since it would mean that the company gained an exceptional recognition. An example of trademark erosion is the verb "to hoover" (used with the meaning of "vacuum cleaning" ), which originated from theHoovercompany brand name.

Nintendois an example of a brand that successfully fought trademark erosion, having managed to replace excessive use of its name with the term "game console",at that time aneologism.[18][20]

Legal concepts[edit]

Whether or not a mark is popularly identified as genericized, the owner of the mark may still be able to enforce theproprietaryrights 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 theUnited Statesbut not inGermany) a generic mark forms part of thepublic domainand can be commercially exploited by anyone. Nevertheless, there exists the possibility of a trademark 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 asgenericization.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 throughactionsforpassing offortrademark infringement.

One risk factor that may lead to genericization is the use of a trademark as averb,pluralorpossessive,unless the mark itself is possessive or plural (e.g., "Friendly's" restaurants).[21]

However, in highly inflected languages, a tradename may have to carry case endings in usage. An example isFinnish,where "Microsoftin"is thegenitive caseand "Facebookista"is theelative case.[22]

Avoiding genericization[edit]

Generic use of a trademark presents an inherent risk to the effective enforcement of trademark rights and may ultimately lead to genericization.

Trademark owners may take various steps to reduce the risk, 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 newinvention,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 ageneric descriptorand is frequently used immediately after the trademark to provide a description of the product or service. For example, "Kleenextissues "(" facial tissues "being the generic descriptor) or"Velcro-brand fasteners "for Velcro brand name hook-and-loop fasteners.

Another common practice among trademark owners is to follow their trademark with the wordbrandto help define the word as a trademark.Johnson & Johnsonchanged the lyrics of theirBand-Aidtelevision commercial jingle from, "I am stuck on Band-Aids, 'cause Band-Aid's stuck on me" to "I am stuck on Band-Aidbrand,'cause Band-Aid's stuck on me. "[23]Googlehas gone to lengths to prevent this process, discouraging publications from using the term 'googling' in reference to Web searches. In 2006, both theOxford English Dictionary[24]and theMerriam Webster Collegiate Dictionary[25]struck a balance between acknowledging widespread use of the verb coinage and preserving the particular search engine's association with the coinage, defininggoogle(all lower case, with -leending) as a verb meaning "use the Google search engine to obtain information on the Internet". TheSwedish Language Councilreceived a complaint from Google for its inclusion ofogooglebar(meaning 'ungoogleable') on its list of new Swedish words from 2012. The Language Council chose to remove the word to avoid a legal process, but in return wrote that "[w]e decide together which words should be and how they are defined, used and spelled".[26]

Where a trademark is used generically, a trademark owner may need to take aggressive measures to retainexclusive rightsto the trademark.Xerox Corporationattempted to prevent the genericization of its core trademark through an extensive public relations campaign advising consumers to "photocopy"instead of" xerox "documents.[27]

TheLego Companyhas worked to prevent the genericization of its plasticbuilding blocksfollowing the expiration of Lego's last major patents in 1978.[28]Lego manuals and catalogs throughout the 1980s included a message imploring customers to preserve the brand name by "referring to [their] bricks as 'LEGO Bricks or Toys', and not just 'LEGOS'."[29][30]In the early 2000s, the company acquired the Legos.comURLin order to redirect customers to the Lego.com website and deliver a similar message.[31]Despite these efforts, many children and adults in the United States continue to use "Legos" as the plural form of "Lego," but competing and interchangeable products, such as those manufactured byMega Brands,are often referred to simply as building blocks or construction blocks.[32]The company has successfully put legal pressure on theSwedish Academyand theInstitute for Language and Folkloreto remove the nounlegofrom their dictionaries.[33]

Adobe Inc.has experienced mixed success with preventing the genericization of their trademarked software,Adobe Photoshop.This is shown via recurring use of "photoshop" as a noun, verb, or general adjective for allphoto manipulationthroughout the Internet and mass media.[34]

Protected designation of origin[edit]

Since 2003, theEuropean Unionhas actively sought to restrict the use ofgeographical indicationsby third parties outside the EU by enforcing laws regarding "protected designation of origin".[35]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. A geographical indication may have been registered as a trademark elsewhere; for example, if "Parma Ham" was part of a trademark registered inCanadaby a Canadian manufacturer, then ham manufacturers inParma,Italy, might be unable to use this name in Canada. Wines (such asBordeaux,PortandChampagne), cheeses (such asRoquefort,Parmesan,Gouda,andFeta),Piscoliquor, andScotch whiskyare examples of geographical indications. Compare Russian use of "Шампанское" (= Shampanskoye) forchampagne-type wine made in Russia.

In the 1990s, the Parma consortium successfully sued theAsdasupermarketchain to prevent it using the description "Parma ham" onprosciuttoproduced in Parma but sliced outside the Parma region.[36]The European Court ruled that pre-packaged ham must be produced, sliced, and packaged in Parma in order to be labeled for sale as "Parma ham".[37]

Scale of distinctiveness[edit]

Main article:Trademark distinctiveness

A trademark is said to fall somewhere along a scale from being "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:[38]

"Fanciful" or "coined"
original words with no meaning as to the nature of the product
"Arbitrary"
existing words with little if any reference to the nature of the product or service
"Suggestive"
having primarily trademark significance but with suggestion as to the nature of the product
"Descriptive"
not just suggesting, but actually describing the product or service yet still understood as indicating source
"Merely descriptive"
having almost entirely reference to the product or service but capable of becoming "distinctive".

See also[edit]

References[edit]

  1. ^Shenker, Israel (1972-11-20)."Trade Names Come and Go and Now There's — Exxon".The New York Times.ISSN0362-4331.Retrieved2023-12-18.
  2. ^"genericide".LII / Legal Information Institute.Retrieved2023-12-19.
  3. ^ab"15 Product Trademarks That Have Become Victims Of Genericization".Consumer Reports.19 July 2014.Retrieved20 August2018.
  4. ^Fisher, William (n.d.)."Overview of Trademark Law".Harvard Law School."Under some circumstances, terms that are not originally generic can become generic over time (a process called" genericity "), and thus become unprotected."
  5. ^Hyra, Clifford D."How Long Does a Trademark Last?".Patents 101.Hyra IP, PLC. Archived fromthe originalon 25 January 2010.
  6. ^"Invalidity and revocation (cancellation)".European Union Intellectual Property Office.Retrieved2023-12-21.
  7. ^"Entertainment Title Duplication Cases: A Process of Evolution".Indiana Law Journal.39(110). 1963-10-01.ISSN0019-6665.
  8. ^"Haughton Elevator Company v. Seeberger".The Trade-Mark Reporter.40:326. 1950.(Thus, in the Architectural FORUM for March 1946, appears an advertisement beginning as follows: "Otis elevators Otis escalators." From this it is seen that the word "escalators" is used generically or descriptively and without any trademark significance just as is the word "elevators." Also, in the same magazine for January 1946, on page 184 thereof, appears the advertisement of the Otis Elevator Company with the name "OTIS," in a circle, prominently displayed near the middle of the page, beneath which is this notation in bold letters "THE MEANING OF THE OTIS TRADEMARK." Beneath this, in part, is the following: "To the millions of daily passengers on the Otis elevators and escalators, the Otis trademark or name plate means safe, convenient, energy-saving transportation. To thousands of building owners and managers, the Otis trademark means the utmost in safe, efficient economical elevator and escalator operation." It is obvious to me from this advertisement that the trademark emphasis is on the word "Otis" and its significant mark because here, again, the word "escalator" or "escalators" is written in small letters and in the same manner and same context as the word "elevator" or "elevators" which obviously has no trademark significance.)
  9. ^"The Life and Death of the Luer".www.mddionline.com.Retrieved2023-12-19.
  10. ^"Phoroptor® by Reichert®: Celebrating 100 Years of Making Vision Clearer".AMETEK Reichert.Retrieved2023-12-19.
  11. ^"Implantable ports".www.macmillan.org.uk.Retrieved2023-12-19.
  12. ^"International Nonproprietary Names Programme and Classification of Medical Products".World Health Organization.Retrieved2023-12-21.
  13. ^Temple, Robert (November 15, 2002)."NDA 21-436: Letter to Otsuka Pharmaceutical Co., Ltd"(PDF).Food and Drug Administration,United States Department of Health and Human Services.
  14. ^"U.S. Food and Drug Administration Approves Abilify® (aripiprazole) as the First Medication for Add-On Treatment of Major Depressive Disorder (MDD)"(Press release). Bristol-Myers Squibb Company. November 20, 2007.
  15. ^Greenaway, Masa’il; Elbe, Dean (August 2009)."Focus on Aripiprazole: A Review of its use in Child and Adolescent Psychiatry".Journal of the Canadian Academy of Child and Adolescent Psychiatry.18(3). Canadian Academy of Child and Adolescent Psychiatry: 250–260.PMC2732733.PMID19718428.
  16. ^Lim, Gregory B. (14 December 2017)."Milestone 2: Warfarin: from rat poison to clinical use".Nature Reviews Cardiology.doi:10.1038/nrcardio.2017.172.PMID29238065.
  17. ^Bayer Co. v. United Drug Co.,272 F. 505,p.512 (S.D.N.Y 1921) ( "Disregarding this, however, it was too late in the autumn of 1915 to reclaim the word which had already passed into the public domain. If the consuming public had once learned to know 'Aspirin' as the accepted name for the drug, perhaps it is true that an extended course of education might have added to it some proprietary meaning, but it would be very difficult to prove that it had been done in 17 months, and in any case the plaintiff does not try to prove it. [...] Yet, had it not been indifferent to the results of selling to the consumer, it could have protected itself just as well at the time when consumers began to buy directly as in 1915. Nothing would have been easier than to insist that the tablet makers should market the drug in small tin boxes bearing the plaintiff's name, or to take over the sale just as it did later. Instead of this, they allowed the manufacturing chemists to build up this part of the demand without regard to the trade-mark. Having made that bed, they must be content to lie in it. Hence it appears to me that nothing happening between October, 1915, and March, 1917, will serve to turn the word into a trade-mark." ).
  18. ^abcMarsden, Rhodri (10 June 2011)."'Genericide': When brands get too big ".The Independent.Retrieved20 August2018.
  19. ^abSchofield, John (26 January 2017)."Sometimes a trademark is too 'successful'".The Lawyer's Daily.LexisNexis Canada. Archived fromthe originalon 20 July 2021.Retrieved20 August2018.
  20. ^"Generic Trademarks".The Lingua File.29 November 2012. Archived fromthe originalon 30 August 2017.Retrieved29 August2017.
  21. ^"Trademarks and Brands".3Com Legal.3Com Corporation. Archived fromthe originalon 10 February 2009.Retrieved28 March2010.
  22. ^Microsoft Oy (10 November 2011)."Nokia Lumia 800 ensiesittelyssä Microsoftin Hello Helsinki! -tapahtumassa".Microsoft TechNet(in Finnish). Microsoft.Retrieved2 January2013.
  23. ^"A cost effective way to protect against genericide".RetrievedSeptember 28,2020.
  24. ^Duffy, Jonathan (20 June 2003)."Google calls in the 'language police'".BBC News.Retrieved20 August2018.
  25. ^"Google".Merriam-Webster.com Dictionary.Merriam-Webster, Incorporated.Retrieved20 August2018.
  26. ^Fanning, Sean (26 March 2013)."Google gets ungoogleable off Sweden's new word list".BBC News.Archivedfrom the original on 17 June 2019.Retrieved13 April2024.
  27. ^Carton, Bruce (30 June 2010)."Xerox Ad Pretends We Care About Its Trademark Rights to Term Xerox".Legal Blog Watch.Law.com.Retrieved20 August2018.
  28. ^Austen, Ian (2005-02-02)."Building a Legal Case, Block by Block".The New York Times.ISSN0362-4331.Retrieved2023-12-15.
  29. ^Cooper, John (2023-08-18)."Susan Williams: The Most Famous LEGO Employee That Never Existed".BrickNerd - All things LEGO and the LEGO fan community.Retrieved2023-12-15.
  30. ^Retroist."1985 Lego Catalog".www.retroist.com.Retrieved2023-12-15.
  31. ^"Please -- it's LEGO, not Legos".The Globe and Mail.2005-09-06.Retrieved2023-12-19.
  32. ^"How Mattel Is Challenging Lego's Building Brick Dominance".Fortune.Retrieved2023-12-19.
  33. ^Svensson, Anders (2024). "Orden som försvinner i tysthet" [The words that silently disappear].Språktidningen[The Language Magazine] (in Swedish). No. 3.ISSN1654-5028.
  34. ^"General trademark guidelines".Adobe. Adobe Systems Incorporated.Retrieved2 January2013.
  35. ^Rovamo, Oskari (August 2006).Monopolising Names? The Protection of Geographical Indications in the European Community(PDF)(Pro Gradu). Faculty of Law, Helsinki University. Archived fromthe original(PDF)on 18 September 2018.Retrieved28 March2010.
  36. ^Owen, Richard; Elliott, Valerie (21 May 2003)."'Barmy' ruling bans Asda from undercutting its Parma ham ".The Times.Retrieved5 October2009.
  37. ^"Asda slams 'ham-fisted' Parma ruling".BBC News.British Broadcasting Corporation.20 May 2003.Retrieved20 August2018.
  38. ^Cornell Law School Legal Information Institute, "Abercrombie Classification"(last visited Feb. 3, 2024)

Further reading[edit]

External links[edit]

Look upgeneric trademarkin Wiktionary, the free dictionary.
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