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1 May 2015Trademarks

Genericide: A cruel twist of fate

Reading through Interbrand’s ranking of the 100 Best Global Brands last year, it’s clear that the value of the elite companies of today has reached eye-watering levels. Apple, sitting highest, is worth nearly $119 billion—around 30 times more than 100th placed Nintendo (just over $4 billion)—and increased its brand value by 21% since 2013.

The remaining 98 places are littered with famous names and equally impressive figures. Google, breathing down Apple’s neck in second place, was worth around $107 billion and grew by 15% from the previous year.

It’s hardly surprising that Google and other well-known brands including Sony (52nd), Xerox (62nd) and Tiffany & Co (71st) find themselves among the top 100, but these companies also catch the eye for a very different reason: all four have either had skirmishes with, or fallen victim to, the old but rare phenomenon of genericide.

Genericide—when a trademark no longer indicates source of origin but has become the generic term for the product or service it protects—is surely a brand’s worst nightmare. All companies seek to become world-beaters, but their very success can render them vulnerable and threaten the value they have built up, in a cruel twist of fate.

Lost protection

There is a long list of brands that were once trademarked but have lost protection, at least in some countries. Aspirin, Escalator, Pina Colada and Cellophane are four examples, while Sony lost its ‘Walkman’ trademark in Austria in 2002 after the country’s Supreme Court ruled that it had become a generic term for portable stereos.

Xerox, famous for making photocopying machines, has survived the claws of genericide, but only after creating clever marketing campaigns—“when you use ‘Xerox’ the way you use ‘Aspirin’, we get a headache” was one of its messages. Luxury brand Tiffany & Co is trying to fend off claims by wholesaler Costo that the terms ‘Tiffany’ and ‘Tiffany setting’ are generic for a certain engagement ring setting.

Last year, a US district court rejected a claim that ‘Google’, according to a majority of the public, means searching on the internet regardless of the search engine used. The judge in the case, Stephen McNamee, sitting at the US District Court for the District of Arizona, said there is there is “no genuine dispute” about whether a majority of internet search users primarily associate the word ‘Google’ with the company.

Although ‘Google’ does appear in several dictionaries, the plaintiffs were unable to cite a single one whose definition of the word ‘Google’ neglects to mention the trademark significance of the term, the judge added.

David Stone, partner at law firm Simmons & Simmons in London, says: “Google is one of those where even though people use it in a way that ‘trademarks101’ tells us is not right, it’s so famous and so identified with the brand that I think people recognise it as an indication of source of origin. No-one says ‘I google using Yahoo’ because they’re aware that Google and Yahoo are different things.”

Peter Harvey, founding partner of law firm Harvey Siskind, in San Francisco, adds that it seems unlikely the ‘Google’ mark will ever become generic, given the fame of the brand, but that well-known marks are at least theoretically among the most vulnerable.

“If a vast majority of the consuming public, when asked how they would describe doing an online search with a search engine, answered ‘I googled it’, then Google might have a problem,” he adds.

Success symbols

What causes brands to become generic? “It’s a symbol of success,” says Stone. “The brand is so successful it becomes too closely associated with the product or service itself in the minds of the public, such that it becomes the generic term for that product.”

Under the Lanham Act in the US, Harvey explains, the test for determining ‘genericness’ is found in answer to the question: “What is the primary significance of the registered mark to the relevant consuming public?”

“If the term signifies ‘what’ something is, rather than ‘who makes or puts it out’, it is likely the term has become generic,” he says.

Stone explains that trademarks are never truly generic until they are expunged from the register, so while Hoover is often mentioned as being synonymous with vacuum cleaners when discussing genericide, “it has not been taken off the register anywhere in the world as far as I know”.

Genericide is also a jurisdictional concept, he adds, so some trademarks may be generic in one country but not others. ‘Aspirin’, made by German pharmaceutical company Bayer, became generic in the US, UK and France as part of the post-World War I Treaty of Versailles but is still enforced in many other countries worldwide.

Although the incidence of genericide throughout history seems to be fairly low, trademark owners shouldn’t rest on their laurels. Google, for example, has published a long list of dos and don’ts when it comes to using its trademark, including employing it only as an adjective, and never a noun or verb. So while “I just googled it” would worry Google, “I used the Google search engine” would be fine.

Good advice

The International Trademark Association (INTA) has provided brand owners with some important advice to help them avoid falling victim to genericide.

“Courts have taken the position that the public’s understanding of the term as generic must have dwindled to almost nothing."

“Avoid all variations,” the association says. “Variations on a trademark can signal to the consuming public that improper usage is okay. It is not prudent to allow spelling changes, abbreviations, plurals, or apostrophes with the trademark, or to combine it with other words or marks.”

Another tip (like Google’s) is to enforce correct grammatical use, with INTA saying “I need a Kleenex tissue” is correct, but “I need a Kleenex” is wrong. Further, it says, the generic name of a product should be used in association with the trademark (eg, “Apple computers”, “Xerox photocopies” and “Exxon gasoline”).

“A successful example of warding off trademark genericide is the campaign conducted by Xerox to encourage users to refer to ‘photocopying’ documents, not ‘Xeroxing’ documents,” INTA adds.

Campaigns such as Xerox’s are regarded as successful but, as Harvey says, the irony from a marketing standpoint is that a company often “fervently wants the public to consider its brand to identify the category in which its goods or services are sold”—but, if that happens, the mark is in danger of becoming generic.

“The other reality is that using the full trademark designation nomenclature in advertising can clutter up the message—something which marketers absolutely preach against. So, does the advert say: ‘Drive a Buick brand automobile’? or ‘Drive a Buick’?

"Google has published a long list of dos and don’ts when it comes to using its trademark, including employing it only as an adjective, and never a noun or verb."

“In such cases it seems the marketers will always be at odds with the trademark lawyers,” he says.

Trademark owners should clearly be vigilant and prudent to protect their rights, but could a trademark killed off by genericide ever rise from the dead?

“It is theoretically possible that a generic term can be resuscitated as a trademark, but instances of its happening are extremely rare,” says Harvey.

“Courts have taken the position that the public’s understanding of the term as generic must have dwindled to almost nothing, and have been replaced by evidence that the term now indicates a single source. Such a change has been characterised as ‘drastic’ and therefore highly unusual.

“For example, a holding that ‘Ale House’ was generic was re-affirmed over ten years later, even though the mark owner came forth with evidence of distinctiveness and secondary meaning, where the court concluded that such proof did not come close to the dramatic showing needed to establish a change,” he says.

If a company’s trademark becomes generic, clearly it loses legal protection, but there are further problems too. As Stone explains, licensees would likely “turn around and say ‘why am I paying you a fee when you don’t own any rights in this jurisdiction?’”.

He adds that genericide would “wipe off brand value over night”.

Looking back at Interbrand’s list, and the billion-dollar figures attached to each company’s name, it’s clear just how important trademark protection is for preserving such high worth and reputation. If consumers no longer recognise a company as the source of the goods they buy or the services they use, it’s likely to be very costly indeed.

5 trademarks that became generic

Aspirin

Pina Colada

Walkman

Escalator

Cellophane

*Does not apply to all jurisdictions

Last year a US district court rejected a claim that ‘Google’, according to a majority of the public, means searching on the internet regardless of the search engine used.

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Trademarks
9 September 2015   Luxury brand Tiffany has persuaded a US court that retailer Costco infringed its trademark and that the name of its company is not a generic term for jewellery.