Genericized trademark

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A genericized trademark (or genericised trade mark or genericized trade mark, see spelling differences), sometimes known as a generic trade mark, generic descriptor or proprietary eponym, is a trademark or brand name which is often used as the colloquial description for a particular type of product or service as a result of widespread popular or cultural usage. Where a genericized trademark becomes or replaces the common term for a product or service, the mark has become generic. Escalator and Thomas Edison's mimeograph are classic examples.

A trademark typically becomes "genericized" when the products or services with which it is associated have acquired substantial market dominance or mind share. However, a trademark may still become genericized in the absence of significant market share through mechanisms such as viral marketing.

Contents

1 Legal concepts

1.1 Avoiding genericide
1.2 Terminology

2 Protected designation of origin
3 See also
4 External links

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. In many legal systems (e.g. in the USA but not in Germany) a generic mark forms part of the public domain and can be commercially exploited by anyone. Nevertheless there exists the possibility of a trade mark to become 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 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.

For example, one risk factor which may lead to genericide is the use of a trademark as a verb, noun, plural or possessive, unless the mark itself is possessive or plural (eg. "Friendly's" restaurants).[link]

Avoiding genericide

Trademark owners will naturally seek to maximize the popularity of their marks, and may believe that a certain level of genericity demonstrates how well-known and successful a mark has become. However, generic use of a trademark presents an inherent risk to the effective enforcement of trademark rights and may ultimately lead to genericide.

Trademark owners may take various steps to reduce the risk of genericide, 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 new invention, the trademark owner may also consider developing a generic term for the product to be used in descriptive contexts, in order to avoid inappropriate use of the "house" mark.

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 and Romanian, though. See list of generic and genericized trademarks). 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."

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" [link], a member of Cecil Adams's contributing board who suggested "brand eponym" in The Straight Dope Mailbag [link], 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[link].

Protected designation of origin

Since 2003 the European Union has actively sought to restrict the use of geographical indications by third parties outside the EU by enforcing laws regarding what is known as "Protected designation of origin". Although a geographical indication for specialty food or drink may be generic, a geographical indication is not a trademark because it does not serve to exclusively identify a specific commercial enterprise, and therefore cannot constitute a genericized trademark.

The extension of protection for geographical indications is somewhat controversial because a geographical indication may have been registered as a trademark elsewhere. For example, if Parma Ham were part of a trademark registered in Canada by a Canadian manufacturer, ham manufacturers actually located in Parma, Italy might be unable to use this name in Canada.

Other affected products include Champagne, Bordeaux and many other wine names, Roquefort, Parmesan and Feta cheese, and Scotch whisky. In the 1990s the Parma consortium successfully sued the Asda supermarket chain to prevent it using the description Parma ham on prosciutto produced in Parma but sliced outside the region.

External links