The problem of genericide in trademarks

Escalator. Aspirin. Zipper. All of these words started out as trademarked names to define a particular brand but have since entered our common language as generic terms for a moving staircase, a pain reliever and, well, zippers. The loss of a trademark or an identifying brand name itself can cost a company more than just revenue.

Defining the term genericide

Among the intellectual property crowd, the loss of trademark rights when a term enters common usage is called “genericide,” and it can mean the trademark loses its protected status—which is bad news for trademark owners who strive to maintain the uniqueness and distinctiveness of their brands.

The issue of genericide has come to the forefront recently because of a federal lawsuit against Google in which David Elliott is seeking to invalidate some of Google's registrations for the GOOGLE trademark, arguing that the word has come into common usage as a verb that simply means to search the Internet. In support of these claims, Elliott's complaint cites to entries in online dictionaries and other publications.

University of Notre Dame Law Professor Mark P. McKenna notes that leading up to the Google lawsuit, there have been “a few cases [regarding genericide], but most of them are quite old, and courts tend to be very reluctant to declare that a mark has become generic.”

The risk of genericide for the everyday trademark owner is likely fairly low. It is also “way overstated by trademark owners who want to shut down another use but want to shield themselves from bad public relations of doing so,” according to McKenna.

Indeed, William & Mary Law Professor Laura A. Heymann also stated the potential for bad public relations if trademark owners insist on “firing off angry cease-and-desist letters to writers, dictionary editors and other non-competitors,” calling such an approach “overkill.”

What steps can be taken

So what can trademark owners do to make sure their marks don't become victims of genericide? First and foremost, ensure you follow trademark best practices for your own registered trademarks and use your mark properly in written materials. That means:

• Do not use your own trademark as a verb (for example, XEROX® this);
• Do not use your trademark as a noun, but as an adjective, followed by a descriptive noun (for example, BMW® cars);
• Do not use your trademark in possessive form (with an apostrophe s), unless the trademark is possessive (such as McDonald's®);
• Do not use your trademark in the plural form (for example, OREO® Cookies, not OREOS).

In general, the function of a trademark is to distinguish goods and services in the marketplace from other companies—not to describe the goods or services. A trademark can be instrumental to developing your brand identity and building customer loyalty, so, consistency is key. You want to present your mark in the same way across all media—print as well as electronic.

Beyond that, trademark owners can also be careful to denote their distinctive words or phrases with the appropriate mark (® if registered, ™ if unregistered).

Heymann maintains that genericide is “most likely to happen if competitors in the field start using the trademark as the common name for their own products.” Accordingly, the second most important things a trademark owner can do is keep an eye out for competitors who are grabbing their mark and using it in a generic way.

Trademark owners can also be on the lookout for misuses of their marks by media outlets and others. However, as hinted by Heymann, a soft touch when trying to remedy the problem may be better than “firing off angry cease-and-desist letters.”

Your brand is your most important asset. It not only defines who you are as company today, it can determine what your company will be tomorrow, too.