- Genericized trademark
A genericized trademark (also known as a generic trademark or proprietary eponym) is a
trademarkor brand namethat has become the colloquial or generic description for (or synonymous with) a particular class of product or service. Using a genericized trademark to refer to the general form of what that trademark represents is a form of metonymy. (See examples below.)
trademarktypically becomes "genericized" when the products or services with which it is associated have acquired substantial market dominance or mind share. The term is legally significant in that unless a company works sufficiently to prevent such broad use of its trademark, its intellectual propertyrights in the trademark may be lost.
Classic examples include:
Aspirin(acetylsalicylic acid tablets, a type of pain relief medication)
Band-Aid, Johnson & Johnson's brand of adhesive medical bandages
Biro, an Hungarian brand of the ballpoint pen.
* Jello, a
gelatin dessert, from the trademarked Jell-O. North America only, elsewhere this product is more commonly known as jelly)
* Crock-Pot – Crock-Pot is sold by Rival Industries, but "crock pot" and "crockpot" are common synonyms used by cooks to describe
slow cookers [cite web | url=http://www.ochef.com/764.htm | title=Is Slow Cooker Synonymous with Crock-Pot? | work=Food News Service | accessdate=2008-01-24]
Escalator– Originally a trademark of Otis Elevator Company[ [http://www.theelevatormuseum.org/h/h-1.htm#15 Human Interest ] ]
Frisbee- a registered trademarkof the Wham-Otoy company, but is often used generically to describe all flying discs.
Hoover– a vacuum cleaner. Still in common usage in the UK [ [http://linkinghub.elsevier.com/retrieve/pii/S0267364903003108] ]
Kerosene[ [http://dictionary.reference.com/browse/kerosene kerosene – Definitions from Dictionary.com ] ] – First used around 1852
Kleenex- Facial tissue
Linoleum– Floor covering [ [http://www.bartleby.com/61/88/L0188800.html linoleum. The American Heritage® Dictionary of the English Language: Fourth Edition. 2000 ] ]
Pilatesexercise system – United States trademark formally canceled by a court in 2000 [cite web | url=http://www.pilates.com/BBAPP/V/about/pilates-trademark.html | title=Pilates Trademark Lawsuit makes "Pilates" available for public use | work=Pilates.com | accessdate=2008-01-24]
Tupperware- Plastic storage tubs, mainly used with food
Xerox- used generically to refer to any act of photocopying
Ziploc- a brand of disposable, re-sealable zipper storage bags and containers originally developed by Dow Chemical Company, and now produced by S. C. Johnson & Son, but often used for any disposal zipper bags
Zipper– Originally a trademark of B.F. Goodrich for a line of rubber overshoes using the fastening device [ [http://dictionary.reference.com/browse/zipper zipper – Definitions from Dictionary.com ] ] (Simply known as a zip outside North America)
For a list of trademarks which are now generic and current trademarks commonly misused in a generic sense, see the
List of generic and genericized trademarks.
Whether or not a mark is popularly identified as genericized, the owner of the mark may still be able to enforce the
proprietaryrights 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 United Statesbut not in Germany) a generic mark forms part of the public domainand 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 (i.e., 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
One risk factor which may lead to genericide is the use of a trademark as a
verb, noun, pluralor possessive, unless the mark itself is possessive or plural (e.g., "Friendly's" restaurants). [ [http://www.3com.com/corpinfo/en_US/legal/trademark/prop_usage_tmb.html#1 3Com Legal: Trademarks and Brands ] ]
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. Such a term is called a generic descriptor, and is frequently used immediately after the trademark to provide a description of the product or service. For example, "Kleenex tissues" (tissues being the generic descriptor) or "Velcro fasteners" (fasteners being the generic descriptor).
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. Xeroxprovides one successful example of a company which was able to prevent the genericide of its core trademark through an extensive public relations campaign advising consumers to " photocopy" instead of "Xeroxing" documents (the brand did become generic in Russian, Bulgarian, Polish, Portuguese 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 & Johnsonchanged the lyrics of their Band-Aidtelevision 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." neologismFWSEing, in reference to the Famous Web Search Engine. [cite news|url=http://www.newscientist.com/article/mg19125672.700-feedback.html|title=Feedback|publisher= New Scientist|date= 2006-09-02|accessdate=2007-01-25] In 2006, "google" has been defined in the "Merriam Webster Collegiate Dictionary" and the " Oxford English Dictionary" as a verb meaning "to use the Google search engine to obtain information on the Internet." [ [http://www.merriam-webster.com/dictionary/google google - Definition from the Merriam-Webster Online Dictionary] , " Merriam-Webster"] [ [http://news.bbc.co.uk/1/hi/uk/3006486.stm "Google calls in the 'language police'"] , " BBC", June 20, 2003]
One example of an active effort to prevent the genericization of a trademark was that of the LEGO Company, which printed in manuals in the 1970s and 1980s a request to customers that they call the company's interlocking plastic building blocks "'LEGO blocks' or 'toys' and not 'LEGOs'." While this went largely unheeded, and many children and adults in the US referred to the pieces as "LEGOs", use of the deprecated term remained largely confined to the LEGO Company's own products – and not, for example, to Tyco's competing and interchangeable product – so genericization of the LEGO trademark did not occur.
The terms "genericide" and "genericized trademark" are not technical terms. Alternative terms have been suggested by various commentators, such as the judge in "Plasticolor Molded Products v. Ford Motor Company", who called "genericide" a
malapropismand suggested "genericization" or "trademarkicide", [http://print.google.com/print?id=e67o2-S_riMC&lpg=73&dq=genericide&prev=http://print.google.com/print%3Fie%3DUTF-8%26q%3Dgenericide%26btnG%3DSearch&pg=74&sig=TfNmUH7tJvkVUz-VCyjqJcIOw4Q] ] a member of Cecil Adams's contributing board who suggested "brand eponym" in The Straight DopeMailbag, [ [http://www.straightdope.com/mailbag/meponym.html The Straight Dope Mailbag: Is there a term for "trade names that become generic"?
] ] and others who have suggested "proprietary eponym". However, to date only "genericide" has been used in legal literature. [http://books.google.com/books?ie=UTF-8&vid=ISBN1570183139&id=e67o2-S_riMC&pg=PA74&lpg=PA74&vq=genericide&sig=Nt1hU0m9fYo4fGcdKmHweT5wQPA]
Tradename status reasserted
The word "
Aqua-Lung" was originally a tradename for a make of open-circuit scuba setmade according to the Cousteau- Gagnanpatent. It quickly slipped into use as a generic, but its tradename status has been largely restored in English-speaking countries, but it remains a generic in Russian (акваланг).
Opposite effect in other legislation
The section above describes the situation in countries such as the United States, where a genericization causes a trademark to lose its protection, a consequence the trademark owner might wish to avoid. In other countries, e.g. in Germany, a trademark stays protected even after genericization. In this case, the outcome is very positive for the owner; the customer might not even know the proper non-trademarked term for the product, or consider this term as very artificial sounding and/or inconvenient, and hence associates only the trademark owner's product with the whole range of products, possibly even being ignorant about alternatives.
The classic example is
Bayer's trademark for the drug Aspirin. A customer at a pharmacy is more likely to ask for "Aspirin" than for "acetylsalicylic acid tablets", which is the name all manufacturers of generic versions of the drug are forced to use in order not to infringe the trademark. In the United States, Bayer lost the trademark to the word "aspirin" after World War I. In 1921, a landmark ruling by Learned Handestablished "aspirin" as a genericized trademark. [" [http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm Bayer Co. v. United Drug Co.] ", 272 F. 505 (S.D.N.Y. 1921). Free full text at Harvard Law School's Berkman Center for Internet & Society. Retrieved on 2007-09-07.]
Protected designation of origin
Since 2003, the
European Unionhas 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, it 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
Canadaby a Canadian manufacturer, ham manufacturers actually located in Parma, Italymight be unable to use this name in Canada.
Bordeaux, cheeses such as Roquefort,
Parmesan, and Feta, Piscoliquor, and "Scotch" whisky are examples of geographical indications. In the 1990s, the Parma consortium successfully sued the Asda supermarketchain to prevent it using the description "Parma ham" on prosciuttoproduced in Parma but sliced outside the Parma region.
In some cases companies have managed to register common names as trade marks, but this typically results in the eventual cancellation or surrender of the registration concerned. This has occurred in the
United Statesin relation to rooibos. [cite web | url=http://www.npicenter.com/anm/templates/newsATemp.aspx?articleid=12820&zoneid=2 | title=Rooibos Trademark Abandoned | date= June 28, 2005| work=NPI Center | accessdate=2008-01-24 ]
* [http://www.prairienet.org/~rkrause/brands.html American Proprietary Eponyms, a project by R. Krause, December 1997]
* [http://www.pinsentmasons.com/media/300313619.pdf Article on generic brands]
* [http://www.mooretrademarks.com/bestpractices.html Moore Law Blog: Trademark Best Practices: Getting it Right the First Time]
* [http://www.visiobrand.com/index.jsp Visiobrand brand directory]
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