Genericide is when a company’s protectable trademark becomes a common noun, or generic. This happens when a brand’s product becomes so common that it’s a synonym for the entire product category. When this happens, the trademark is deemed “abandoned” and becomes part of the public domain.
What’s really awful about genericide is that it tends to happen when you are too successful.
You have a great marketing campaign, your product is popular and eventually moves to the forefront of its category. Because it becomes everyone’s go-to, people begin to use your brand name in every day speech. At that point, you are entering the dangerous waters of potential genericide.
But even then it’s not a lost cause. Many brands on the cusp of genericide have been able to launch successful marketing campaigns to combat genericide and retain control over their intellectual property.
Here are some examples of brands that have been on the brink of genericide and the ad campaigns they used to keep their grip on their trademark.
While these brands have managed to cling to their trademarks through advertisement strategies, some brands have had to fight it out in court. Here are a few brands that managed to successfully battle to keep their trademarks in the face of genericide:
Wham-O Inc., a toymaker responsible for probably half of your childhood joy went to court in 2008 to protect their rights to Frisbee, Hula Hoop, and Slip ’N Slide. A competitor, Manley Toys Ltd. filed cancellation proceedings. They argued that the names had become generic.
Wham-O countered with a declaratory judgement suit. A judge eventually threw out the suit. Despite their failure in claiming that Manley Toys Ltd. was scheming to destroy their business, they managed to settle and maintain their trademarks on all three toys.
Coca-Cola Co. protected “Coke” from genericide through a trademark suit against a Nevada casino that was selling Pepsi to its customers who requested Coke. The casino defended themselves, saying that “Coke” was a generic term for any soda.
While it’s true that “Coke” has become a regional term for soda of any kind, the court ruled in Coca-Cola’s favor, allowing them to curb the genericide of their trademark.
Google Inc. is in the midst of perhaps the most prominent genericide case in recent memory. As I’m sure you know, to “google” something has become a common synonym for running a web search.
Last spring, the 9th Circuit in California upheld Google’s trademark rights so that they could prevent their name being used in web domain names. The court found that despite the “verbing” of the trademark, Google was still a brandname that functioned beyond the verb.
Two men are seeking to appeal this case to the Supreme Court. They are arguing that the court should not uphold trademarks that have become verbs in their “verbed” context. However, it’s unlikely that the Supreme Court will hear this case, particularly because experts in trademark law affirmed the original ruling.
Not every genericide case that has gone to court has had a favorable outcome for the original owner of the trademark, however.
Bayer originally held the trademark for Aspirin, the common drug called acetylsalicylic acid.
All the way back in 1917, Bayer sued a company for using the term Aspirin to sell their own version of the same drug. The judge ruled against the German company. Interestingly enough, Bayer actually had their U.S. trademarks for Aspirin and Heroin stripped from them at the end of World War I.
Other lost trademarks more classically lost to genericide (sans war reparations) include cellophane, escalator, trampoline, and thermos.
There are strategies to avoid genericide in the usage of your trademark. These guidelines on trademark usage help differentiate your trademarked name from the generic name for the product.
Genericide can be hugely damaging to a company’s brand and business. The association consumers have with your trademark tell them about the quality and nature of your product. Your trademark is what sets you apart from your competitors. Losing that place in consumers’ minds is like losing your product’s public identity.
Because of this, preventing genericide is paramount.
Ultimately, avoiding genericide is about walking that fine line between becoming a household name and slipping into every-day speech. Adhere to trademark usage guidelines, and be sure to take action when people misuse your trademark. If you actively protect and uphold your trademark, genericide will become less of a threat.
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LAWYER & ONLINE ENTREPRENEUR
After graduating from law school and passing the bar, I struggled to find work, pay my bills, and make ends meet. That's when I decided to take control of my future and start working for myself. Now, several years and a handful of companies later, I'm sharing how I launched a successful business, and how you can do it too.