Genericide

While infringement and litigation can be major concerns

for intellectual property trademark owners, genericide
could literally mean the end of their brand. The United
States Patent and Trademark Office (USPTO) does not
allow for generic terms to be registered, and after
registration even the strongest trademarks can
eventually fall victim to genericization.
Genericide Definition
Genericide occurs when a trademark that already has
federal protection falls into common usage such that it no
longer identifies a brand. In other words, if a term goes
from being identified as a source of goods to describing a
category of goods or services, it’s considered to be
genericized.
The USPTO considers genericide a form of trademark
abandonment. This is because trademark owners are
supposed to take active measures to prevent this
problem from happening. Once genericization has
occurred, the owner no longer has exclusive rights over
the trademark. This eliminates many of their legal
remedies against trademark infringement.
The USPTO does not typically initiate action against
genericized trademarks on their own. Instead a challenge
by a third party would be required. You may not know
that your trademark is facing genericide until the wheels
are already set in motion, so taking proactive steps is
your best bet for protecting your trademark.
Can Genericized Trademarks be Registered?
By their very definition, a genericized trademark cannot
be registered with the USPTO. Such trademarks will be
rejected by the trademark office upon filing. If a
trademark application is filed that you believe is generic,
your best option is to file a letter of protest. If the
trademark office approves a trademark that you believe
is generic, your option at that point is to file a trademark
opposition.
Proving Genericide
After a trademark is registered, the two most common
ways that genericide is confirmed is through trademark
cancellation or trademark litigation and. If the owner of a
registration files a lawsuit in relation to infringement, the
opposing party can argue that the trademark has become
genericized in the market.
If a defendant can prove that genericide has occurred,
the IP in question will lose all protection. Third parties
can also take proactive steps to remove trademark
protections by filing a Petition to Cancel. In many
circumstances, these petitions can only be filed within
five years of registration. When they involve genericide,
though, there is no deadline.
Anyone filing a cancellation request must also show that
they have legal grounds to do so. Whether the issue of
genericide is decided through the USPTO or federal
courts, though, the following information is considered
when deliberating on whether it has occurred.
 What is the genus of goods or services at issue?
 Does the relevant public understand the designation
primarily to refer to that genus of goods or services?
Paradoxically, it’s typically only successful brands who
are in danger of genericide. While market dominance is
no doubt a positive outcome, it can result in consumers
using a trademarked property to describe the product or
service itself. This was evidenced in recent litigation
where Google was facing potential genericide thanks to
the wide use of “google” to mean ‘search the internet.’
Courts are often hesitant to declare a protected
trademark to be genericized. When USPTO examining
attorneys or federal courts are considering the issue,
though, each of the following may be presented as
evidence:
 Newspapers or online: Genericized use of a
trademark (e.g. as a verb or improper noun) in
commonly read materials can serve as evidence that
the general public views a term as generic.
 Trade journals: The use of a trademarked term to
describe a product or service category by
professionals in a field can also prove genericide.
  Dictionaries: Terms listed in dictionaries typically
convey public perception.
 Consumer surveys: These can show just how many
consumers actually relate a trademarked term to a
product or category rather than the brand.
Proving trademark genericization may be a difficult
process, but it’s certainly not an impossible one. Some of
the largest corporations in history have fallen victim to
genericide. Many have tried to come back from the brink.
In 1896, the Supreme Court found that the
term Singer had become genericized as meaning ‘sewing
machine.’ In 1958, however, the Fifth Circuit decided they
had recaptured the brand back from the public domain.
The First and Eleventh Circuits have also acknowledged
that a genericized trademark may be able to regain its
distinctiveness.
The Federal Circuit has likewise noted that genericized
terms that are elements of other trademarks may be able
to regain protection. The Fifth and Seventh Circuits,
however, have maintained that a property cannot recover
federal safeguards once genericide has occurred.
Preventing Brand Genericide
Once a trademark becomes dominant in the market, the
risk of genericide greatly increases. To avoid
genericization, trademark owners can take the following
steps to help avoid the issue.
 Add generic term: Adding a generic name to the
brand (e.g. KODAK cameras) helps consumers
differentiate the brand from the product type. Create
a generic term if your product is the first of its kind.
 Don’t use as a noun: Using your trademark as an
improper noun could lead to its identification as a
product type rather than a brand identifier.
 Don’t use as a verb: A trademark that’s used as a
verb could develop common usage among
consumers to describe the actions of all products
within the same category.
 Add the word ‘brand’: Much like adding a generic
term, placing the word ‘brand’ after your trademark
will indicate that it’s a specific brand within a subset
of products or services.
 Diversify your offerings: Companies that sell
products or services in more than one category are
less likely to face genericide. It’s difficult to relate a
trademark to a single class when multiple products
types are being sold.
 Monitor licensee uses: It’s imperative to maintain
a level of control when licensing your trademark. If
licensees engage in inappropriate use (e.g. using as
a noun), genericization is a real possibility.
 Avoid using in plural form: Plural usage of brand
identifiers can also make them appear as improper
 nouns. Pluralize the generic term instead (e.g.
Apple computers).
 Provide public notice: You should always use the
appropriate trademark symbol to notify consumers
that the term or design in question is a brand
identifier.
 Never abbreviate: Anything utilized to identify your
brand should be used in its full form. Abbreviations of
these identifiers can detract from their strength.
 Respond quickly: Genericide doesn’t typically occur
overnight. If you realize your trademark is being used
generically, take active steps to lessen this usage
with advertisements that make clear distinctions.
 Distinguish from surrounding text: Utilize
capitalization or unique fonts to distinguish a brand
identifier from other surrounding text.
 Fight against infringement: Genericide occurs
most commonly when competitors improperly use a
trademark and aren’t held accountable.
These active measures are all geared towards preventing
the generic use of a protected brand identifier. It all
comes down to public perception, so it’s essential to
clearly distinguish a trademark from other brands, terms
and overall verbiage in the minds of consumers.
Examples of Genericide
While rare for most companies, many companies have
lost valuable trademarks over the years due to this issue.
There are also many examples of genericide that are
currently playing out right before consumers’ eyes.
Escalator
Otis Elevator Company once had exclusive rights over the
term ‘escalator.’ They mistakenly used their trademark in
the form of a noun with the advertisement, “the latest in
elevator and escalator design.” Using the name in a
generic way led to consumers no longer seeing it as a
trademark.
Aspirin
By striving to put the term ‘aspirin’ into wide use, Bayer
accidentally caused genericization. The generic name
they created (i.e. monoacetic acid ester of salicylic acid)
had the sole intent of making doctors simply say ‘aspirin.’
This eventually led to its generic use in America.
Yo-Yo
Papa’s Toy Co. Ltd. had exclusive rights over the term
‘Yo-Yo,’ but the term became generic in America because
the trademark was improperly issued.
Xerox
The brand identifier ‘Xerox’ has become nearly
synonymous with copy machines (e.g. “Can you xerox
this for me?”). The brand took aggressive measures to
prevent the loss of their rights. This included an ad
campaign that stated, “You can’t Xerox a Xerox on a
Xerox. But we don’t mind at all if you copy a copy on a
Xerox® copier.”
This advertisement shows the brand attempting to stop
the use of their property as both a verb and noun, and it
also adds a generic term and the trademark symbol to
set the identifier apart.
Tabasco
When consumers started using the word ‘tabasco’
synonymously with ‘hot sauce,’ the brand took active
measures to distinguish its product in the minds of
consumers. This included an advertisement that
consisted of nothing other than two Tabasco bottles, the
company logo and the phrase, “TABASCO is a registered
trademark & service mark exclusively of McIlhenny
Company, Avery Island, Louisiana 70513.”
Laundromat
The ‘Laundromat’ was introduced by Westinghouse
Electric in 1940. At the time, it merely described a new
model of washing machine that could be mounted to the
wall. The last time the term was listed as registered by
Westinghouse was in 1952.
By allowing the trademark to expire, Westinghouse
allowed the trademark to become generic. This
eventually led to its widespread use to identify
businesses that offered clothes washing services.
Linoleum
The Linoleum Manufacturing Company was established in
1964. The term ‘linoleum’ is another example of
genericide that didn’t go through the typical process. The
inventor of the product never even registered the
trademark for protection. By the time the owner went to
court to defend the trademark, genericization had already
occurred.