What is genericide?
The term genericide is used to describe a trade mark that has become a part of the common language and has effectively evolved into a generic term that is used by the public to describe the products and/or services associated with the trade mark.
One of many examples that comes to mind is the iconic vacuum cleaner brand HOOVER. It amazes me how many people even to this day, refer to vacuum cleaners as ‘Hoovers’. Phrases such as “this Dyson is a fantastic Hoover” when reading reviews for vacuum cleaners are surprisingly common.
As another example, it was not uncommon for people to refer to photocopy machines as Xerox machines based on the dominant brand for photocopiers at the time which was Xerox.
Even the term “to Google it” is now synonymous with internet search engines. Numerous other examples exist and continue to this day. For instance, how many times have you been asked by someone for a Kleenex when they needed a tissue?
Why is this a problem for trade mark owners?
One would think that once your brand has become a part of the common language you have made it – this is not necessarily the case.
Certainly, it is a strong indicator that your marketing has been extremely effective; however genericide is a catch 22 situation: on the one hand, it clearly indicates that the owner of the trade mark has been successful with their marketing, so successful in fact that their brand is now synonymous with the product (although not necessarily their product and therein lies the problem).
On the other hand, the possibility of the owner having their registered trade mark removed becomes a distinct reality, and the reason behind this comes down to the legal requirements for trade marks that will be discussed next.
Generic trade marks
One of the criteria for obtaining and indeed maintaining a trade mark is that it cannot be overly descriptive of one’s products and/or services, and we call such trade marks generic trade marks. Not only is it grounds for rejecting a trade mark application, it is also a grounds for removal.
Once a trade mark has become overly generic through the process of genericide, the ability for it to act as a trade mark is severely diminished.
As the purpose of a trade mark is to distinguish one’s products and/or services from those of the trade mark owner’s competitors, having a trade mark that has become generic has the result of diminishing the ability for the trade mark to distinguish the associated products and/or services from those of others.
Trade marks that have suffered genericide
Brands such as CELLOPHANE and ESCALATOR were once registered trade marks in countries such as America; however, through the process of genericide they are no longer registered trade marks in certain countries such as America.
In the case of the former ESCALATOR trade mark, this mark was originally owned by Otis Elevator Co. However, it was decided in the US court case of Haughton Elevator Co. vs. Seeberger (Otis Elevator Co.), 85 U.S.P.Q 80 (Comm. Pat. 1950) that ESCALATOR had become a generic term for a moving staircase and was thus removed as a trade mark.
In the 1921 decision of Bayer co., Inc. vs. United Drug Co., 272 F. 505 (S.D.N.Y 1921) ASPIRIN was held to be a generic term for acetylsalicylic acid analgesics and was removed as a trade mark.
CELLOPHANE was held to be a generic term for transparent cellulose sheets in DuPont Cellophane Co. vs. Waxed Products Co., 85 F.2d 75 (2d. Cir. 1936) and was hence removed as a trade mark.
Many other examples of trade marks that have suffered a similar fate in the courts exist and have had serious consequences on valuable trade mark portfolios owned by companies.
How do you prevent genericide?
One strategy that many companies use when facing the dreary prospect of genericide is to educate the public.
For instance, when someone asks one to pass a Kleenex (tissue), the public should be educated that it is not a ‘Kleenex’ but a KLEENEX® branded tissue.
In the past when brands were on their way towards genericide, aggressive marketing campaigns were employed. These marketing campaigns were successful in protecting numerous trade marks from the fate of genericide.
Another example of the misuse of a trade mark such as XEROX is a member of the public saying “Please Xerox this report for me” where the correct phrase should be “Please copy this report using the Xerox® copier,” and this is something that the public can be educated on.
Marketing material can also assist in educating the public, such as printing references to trade marks in all upper case such as XEROX, KODAK and HOOVER or alternatively making liberal use of the ® symbol in print material, i.e., Xerox®, Kodak® and Hoover®.
The use of these conventions in print material and the like, makes it clearer that the word is a trade mark and not a generic descriptor.
It is important that trade marks are not misused and that they are used in their proper context rather than as a generic term. As has been discussed, misuse of trade marks can have disastrous consequences and it is vitally important that trade mark owners are aware of these issues.
If you have any questions regarding this or any other trade mark matters, please feel free to contact one of our trade mark experts at Baxter IP.