Genericized trademark: Encyclopedia II - Genericized trademark - Legal concepts

Genericized trademark - Legal concepts

Whether or not a mark is popularly identified as genericized, the owner of the mark may still be able to enforce the proprietary rights which attach to the use or registration of the mark, so 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. A generic mark forms part of the public domain and can be commercially exploited by anyone.

The process by which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time where a mark is not used as a trademark (ie. 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 infringement.

Genericized trademark - Avoiding genericide

Trademark owners will naturally seek to maximize the popularity of their marks, and some believe that it is useful to achieve a level of genericity, or may otherwise overlook a certain level of generic use, as this demonstrates how well-known a mark has become. Nevertheless, generic trademark use presents an inherent risk to effective enforcement of trademark rights. Genericide can however be avoided if trademarks are appropriately used and enforced.

For example, trademark owners should not use their trademark as a verb, noun, plural or possessive, as this will imply the trademark is generic (unless the mark itself is possessive or plural, e.g., "Friendly's" restaurants). If the trademark is associated with a new invention, the trademark owner could consider developing a generic term for the product to be used in descriptive contexts, in order to avoid inappropriate use of the trademark.

Where a trademark is used generically a trademark owner may need to take special proactive measures in order to retain exclusive rights to the trademark. Xerox provides one successful example of a company which was able to prevent the genericide of its core trademark through an extensive marketing campaign advising consumers to "photocopy" instead of "Xeroxing" documents (the brand did become generic in Russian, though -- see below). 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."

Genericized trademark - Terminology

The terms "genericide" and "genericized trademark" are not terms of art; legally, "genericide" is a "malapropism". Alternative terms have been suggested by various commentators, such as the judge in Plasticolor Molded Products v. Ford Motor Company, who suggested "genericization" or "trademarkicide" [1], Cecil Adams who suggested "brand eponym" in The Straight Dope [2], and others who have suggested "proprietary eponym". These latter terms and the term "genericized trademark" have not yet been used in legal literature whereas "genericide" has.

Adapted from the Wikipedia article "Legal concepts", under the G.N U Free Docmentation License. Please also see http://en.wikipedia.org/wiki