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A generic trademark, also known as a genericized trademark or proprietary eponym, is a trademark or brand name that, due to its popularity or significance, has become the generic name for, or synonymous with, a general class of product or service, usually against the intentions of the trademark's holder. The process of a product's name becoming genericized is known as genericide.[1] A trademark is said to become genericized when it begins as a distinctive product identifier but changes in meaning to become generic. This typically happens when the products or services with which the trademark is associated have acquired substantial market dominance or mind share, such that the primary meaning of the genericized trademark becomes the product or service itself rather than an indication of source for the product or service. A trademark thus popularized has its legal protection at risk in some countries such as the United States
United States
and United Kingdom, as its intellectual property rights in the trademark may be lost and competitors enabled to use the genericized trademark to describe their similar products, unless the owner of an affected trademark works sufficiently to correct and prevent such broad use.[2][3][4] Thermos,[5] Kleenex, ChapStick, Dumpster, Band-Aid, Velcro, Hoover, Realtor and Speedo
Speedo
are examples of trademarks that have become genericized in the US and elsewhere.

Contents

1 In subpopulations 2 In pharmaceuticals 3 Trademark
Trademark
erosion 4 Legal concepts

4.1 Avoiding genericization

5 Protected designation of origin 6 Scale of distinctiveness 7 See also 8 References 9 Further reading 10 External links

In subpopulations[edit] Genericization or "loss of secondary meaning" may be either among the general population or among just a subpopulation, for example, people who work in a particular industry. Some examples of the latter type from the vocabulary of physicians include the names Luer-Lok (Luer lock), Phoroptor (phoropter), and Port-a-Cath (portacath), which have genericized mind share (among physicians) because (1) the users may not realize that the term is a brand name rather than a medical eponym or generic-etymology term, and (2) no alternative generic name for the idea readily comes to mind. Most often, genericization occurs because of heavy advertising that fails to provide an alternative generic name or that uses the trademark in similar fashion to generic terms. Thus, when the Otis Elevator Company
Otis Elevator Company
advertised that it offered "the latest in elevator and escalator design," it was using the well-known generic term "elevator" and Otis's trademark "Escalator" for moving staircases in the same way. The Trademark
Trademark
Office and the courts concluded that, if Otis used their trademark in that generic way, they could not stop Westinghouse from calling its moving staircases "escalators", and a valuable trademark was lost through genericization. In pharmaceuticals[edit] The pharmaceutical industry affords some protection from genericization of trade names due to the modern practice of assigning a nonproprietary name for a drug based upon chemical structure. Brand-name drugs have well-known nonproprietary names from the beginning of their commercial existence, even while still under patent, preventing the aforementioned problem of “no alternative generic name for the idea readily comes to mind”. For example, even when Lipitor
Lipitor
was new, its nonproprietary name, atorvastatin, was well known.[citation needed] Examples of genericization before the modern system of generic drugs include aspirin, introduced to the market in 1897, and heroin, introduced in 1898; both were originally trademarks of Bayer AG. U.S. court rulings in 1918 and 1921 found the term[which?] to be genericized, stating the company’s failure to reinforce the brand’s connection with their product as the reason.[6] Bayer’s involvement in the Great Phenol Plot
Great Phenol Plot
during World War I, and subsequently the U.S. declaration of war on Germany, were also involved in the case of aspirin and heroin. A different sense of the word genericized in the pharmaceutical industry refers to products whose patent protection has expired. For example, Lipitor
Lipitor
was genericized in the U.S. when the first competing generic version was approved by the FDA in November 2011. In this same context, the term genericization refers to the process of a brand drug losing market exclusivity to generics. Trademark
Trademark
erosion[edit] Main article: List of generic and genericized trademarks Trademark
Trademark
erosion, or genericization, is a special case of antonomasia related to trademarks. It happens when a trademark becomes so common that it starts being used as a common name[7] and the original company has failed to prevent such use. Once it has become an appellative, the word cannot be registered any more; this is why companies try hard not to let their trademark become too common, a phenomenon that could otherwise be considered a successful move since it would mean that the company gained an exceptional recognition. Nintendo
Nintendo
is an example of a brand that successfully fought trademark erosion, having managed to replace excessive use of its name by the then-neologism game console.[8][9] A more contemporary example is the genericized use of the word 'iPad' to describe all personal computers in tablet form. Legal concepts[edit] Whether or not a mark is popularly identified as genericized, the owner of the mark may still be able to enforce the proprietary rights that attach to the use or registration of the mark, as 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 States
United States
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 trademark becoming 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 known as genericization. This process typically occurs over a period of time in which 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 trademark infringement. One risk factor that may lead to genericization is the use of a trademark as a verb, plural or possessive, unless the mark itself is possessive or plural (e.g., "Friendly's" restaurants).[10] However, in highly inflected languages, a tradename may have to carry case endings in usage, for example in Finnish "Microsoftin" (genitive case) and "Facebookista" (elative case).[11] Avoiding genericization[edit] Generic use of a trademark presents an inherent risk to the effective enforcement of trademark rights and may ultimately lead to genericization. The legal team of Velcro created a music video highlighting the tragedy of genericide.[12] Trademark
Trademark
owners may take various steps to reduce the risk, 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, 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
Kleenex
tissues" ("facial tissues" being the generic descriptor) or " Velcro brand fasteners" for Velcro brand name hook-and-loop fasteners. Another common practice among 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
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
Band-Aid
brand, 'cause Band-Aid's stuck on me."[citation needed] Google
Google
has gone to lengths to prevent this process, discouraging publications from using the term 'googling' in reference to Web searches. In 2006, both the Oxford English Dictionary[13] and the Merriam Webster
Merriam Webster
Collegiate Dictionary[14] struck a balance between acknowledging widespread use of the verb coinage and preserving the particular search engine's association with the coinage, defining google (all lower case, with -le ending) as a verb meaning "use the Google
Google
search engine to obtain information on the Internet". Where a trademark is used generically, a trademark owner may need to take aggressive measures to retain exclusive rights to the trademark. Xerox
Xerox
corporation attempted to prevent the genericization of its core trademark[15] through an extensive public relations campaign advising consumers to "photocopy" instead of "xerox" documents. One example of an active effort to prevent the genericization of a trademark was that of the Lego
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
Lego
bricks', 'blocks' or 'toys', and not 'Legos'." While this went largely unheeded, and many children and adults in the U.S. referred to and continue to refer to the pieces as "Legos", use of the deprecated term remained largely confined to the Lego
Lego
Company's own products – and not, for example, to Tyco's competing and interchangeable product – so genericization of the Lego
Lego
trademark did not occur.[citation needed] Adobe Systems
Adobe Systems
is working to prevent the genericization of their trademarks, such as Photoshop, but has mixed success. This is shown via recurring use of the verb "photoshopped", or the shortened version "shopped", throughout the Internet and mass media.[16] Protected designation of origin[edit] Since 2003, the European Union
European Union
has actively sought to restrict the use of geographical indications by third parties outside the EU by enforcing laws regarding "protected designation of origin".[17] Although a geographical indication for specialty food or drink may be generic, it is not a trademark because it does not serve to identify exclusively 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
Parma
Ham" was part of a trademark registered in Canada
Canada
by a Canadian manufacturer, ham manufacturers in Parma, Italy
Italy
might be unable to use this name in Canada. Wines (such as Bordeaux, Port and Champagne), cheeses (such as Roquefort, Parmesan, and Feta), Pisco
Pisco
liquor, and Scotch whisky
Scotch whisky
are examples of geographical indications. In the 1990s, the Parma
Parma
consortium successfully sued the Asda supermarket chain to prevent it using the description " Parma
Parma
ham" on prosciutto produced in Parma
Parma
but sliced outside the Parma region.[18][clarification needed] Compare Russian use of "Шампанское" (= Shampanskoye) for champagne-type wine made in Russia. Scale of distinctiveness[edit] Main article: Trademark
Trademark
distinctiveness A trademark is said to fall somewhere along a scale from being "distinctive" to "generic" (used primarily as a common name for the product or service rather than an indication of source). Among distinctive trademarks the scale goes from strong to weak:[citation needed]

"Arbitrary" having no meaning as to the nature of the product "Fanciful" or "coined" original and having little if any reference to the nature of the product or service "Suggestive" having primarily trademark significance but with suggestion as to nature of product "Descriptive" not just suggesting, but actually describing the product or service yet still understood as indicating source "Merely descriptive" having almost entirely reference to the product or service but capable of becoming "distinctive".

See also[edit]

Brand
Brand
management Eponym Metonymy Generic brand Proper adjective Synecdoche Trademark
Trademark
dilution

References[edit]

^ "Elliott v. Google, Inc., No. 15-15809 (9th Cir. 2017)". Justia Law. Retrieved 2017-11-28.  ^ "Genericized trademark". Nowsell. Archived from the original on 2016-01-14.  ^ "Overview of Trademark
Trademark
Law". Harvard Law School.  "Under some circumstances, terms that are not originally generic can become generic over time (a process called "genericity"), and thus become unprotected." ^ "How Long Does a Trademark
Trademark
Last?". Patents 101 (Hyra IP).  ^ King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963); see also this PDF Archived 2006-02-09 at the Wayback Machine. ^ Bayer Co. v. United Drug Co., 272 F. 505, p.512 (S.D.N.Y 1921) (“Disregarding this, however, it was too late in the autumn of 1915 to reclaim the word which had already passed into the public domain. If the consuming public had once learned to know ‘Aspirin’ as the accepted name for the drug, perhaps it is true that an extended course of education might have added to it some proprietary meaning, but it would be very difficult to prove that it had been done in 17 months, and in any case the plaintiff does not try to prove it. [...] Yet, had it not been indifferent to the results of selling to the consumer, it could have protected itself just as well at the time when consumers began to buy directly as in 1915. Nothing would have been easier than to insist that the tablet makers should market the drug in small tin boxes bearing the plaintiff's name, or to take over the sale just as it did later. Instead of this, they allowed the manufacturing chemists to build up this part of the demand without regard to the trade-mark. Having made that bed, they must be content to lie in it. Hence it appears to me that nothing happening between October, 1915, and March, 1917, will serve to turn the word into a trade-mark.”). ^ Littré ^ "Generic Trademarks". www.thelinguafile.com. Retrieved 29 August 2017.  ^ "'Genericide': When brands get too big". 10 June 2011. Retrieved 29 August 2017.  ^ "3Com Legal: Trademarks and Brands". 3com.com. Retrieved 2010-03-28.  ^ Microsoft
Microsoft
Oy (2011-11-10). "Nokia Lumia 800 ensiesittelyssä Microsoftin Hello Helsinki! -tapahtumassa - Microsoft
Microsoft
Oy - Uutisia - Site Home - TechNet Blogs". Blogs.technet.com. Retrieved 2013-01-02.  ^ VELCRO® Brand
Brand
(2017-09-25), Don't Say Velcro, retrieved 2017-11-28  ^ " Google
Google
calls in the 'language police'", BBC, June 20, 2003 ^ "Google". Merriam-Webster.  ^ " Xerox
Xerox
Ad Pretends We Care About Its Trademark
Trademark
Rights to Term Xerox". legalblogwatch.typepad.com. June 30, 2010.  ^ " Adobe Systems
Adobe Systems
Incorporated Permissions and Trademark
Trademark
Guidelines". Adobe.com. Retrieved 2013-01-02.  ^ "Monopolising Names? The Protection of Geographical Indications in the European Community" (PDF). Retrieved 2010-03-28.  ^ Richard Owen, Valerie Elliott (2003-05-21). "'Barmy' ruling bans Asda
Asda
from undercutting its Parma
Parma
ham". The Times. Retrieved 2009-10-05. CS1 maint: Uses authors parameter (link)

Further reading[edit]

Room, Adrian (1983). Dictionary of Trade Name Origins. Routledge. ISBN 0-7102-0174-5. 

External links[edit]

Look up generic trademark in Wiktionary, the free dictionary.

American Proprietary Eponyms, a project by R. Krause, December 1997 Video link on generic brands Visiobrand brand directory

v t e

Trademark
Trademark
law

Concepts

Distinctiveness Dilution Generic trademark Passing off Concurrent use Priority right Coexistence agreement Confusing similarity Functionality doctrine Initial Interest Confusion Good faith doctrine Fair use Secondary liability Nominative use Disparagement Reputation parasitism Cybersquatting Parallel import Well-known trademark

Treaties

Paris Convention Madrid Agreement Madrid Protocol TRIPS Singapore Treaty Community Trade Mark Uniform Domain-Name Dispute-Resolution Policy

Country

Australia Canada China European Union Hong Kong India Ireland Japan Oman Philippines United Kingdom United States

Types

Standard

Registered trademark Service mark Trade dress Unregistered trademark Wordmark

Non-standard

Certification marks Chartered marks Collective trademarks Defensive trademarks Electronic registration marks Font trademark Ghost marks Geographical indication Protected designation of origin

Non-conventional

Colour trademarks Hologram trademarks Motion trademarks Scent trademarks Shape trademarks Sound trademarks

Related

Brand Emblem Logo

Bodies

WIPO International Trademark
Trademark
Association EUIPO USPTO ICANN Deutsches Patent- und Markenamt

Symbols

Registered trademark
Registered trademark
symbol Service mark
Service mark
symbol Unregistered trademark symbol

Related

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examiner Trademark
Trademark
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share Trademark
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troll World Trademark
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Review

Category: Trademark
Trademark
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