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.
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 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.
Thermos, Kleenex, ChapStick, Dumpster, Band-Aid, Velcro, Hoover,
Speedo are examples of trademarks that have become
genericized in the US and elsewhere.
1 In subpopulations
2 In pharmaceuticals
4 Legal concepts
4.1 Avoiding genericization
5 Protected designation of origin
6 Scale of distinctiveness
7 See also
9 Further reading
10 External links
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,
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 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.
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
Lipitor was new, its nonproprietary name, atorvastatin, was well
known. 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. 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,
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.
Main article: List of generic and genericized trademarks
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 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 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. A more contemporary example is the
genericized use of the word 'iPad' to describe all personal computers
in tablet form.
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 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
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).
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).
Generic use of a trademark presents an inherent risk to the effective
enforcement of trademark rights and may ultimately lead to
The legal team of
Velcro created a music video highlighting the
tragedy of genericide.
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 tissues" ("facial tissues" being the
generic descriptor) or "
Velcro brand fasteners" for
Velcro brand name
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
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."
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 and the
Merriam Webster Collegiate Dictionary
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 search engine to obtain information on
Where a trademark is used generically, a trademark owner may need to
take aggressive measures to retain exclusive rights to the trademark.
Xerox corporation attempted to prevent the genericization of its core
trademark 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 Company, which printed in manuals in
the 1970s and 1980s a request to customers that they call the
company's interlocking plastic building blocks "'
'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 Company's own products – and
not, for example, to Tyco's competing and interchangeable product –
so genericization of the
Lego trademark did not occur.[citation
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.
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 "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 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 Ham" was
part of a trademark registered in
Canada by a Canadian manufacturer,
ham manufacturers in Parma,
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 liquor, and
Scotch whisky are
examples of geographical indications.
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 Parma
Compare Russian use of "Шампанское" (= Shampanskoye) for
champagne-type wine made in Russia.
Scale of 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
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
having primarily trademark significance but with suggestion as to
nature of product
not just suggesting, but actually describing the product or service
yet still understood as indicating source
having almost entirely reference to the product or service but capable
of becoming "distinctive".
^ "Elliott v. Google, Inc., No. 15-15809 (9th Cir. 2017)". Justia Law.
^ "Genericized trademark". Nowsell. Archived from the original on
^ "Overview of
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
^ "How Long Does a
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
^ 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.”).
^ "Generic Trademarks". www.thelinguafile.com. Retrieved 29 August
^ "'Genericide': When brands get too big". 10 June 2011. Retrieved 29
^ "3Com Legal: Trademarks and Brands". 3com.com. Retrieved
Microsoft Oy (2011-11-10). "Nokia Lumia 800 ensiesittelyssä
Microsoftin Hello Helsinki! -tapahtumassa -
Microsoft Oy - Uutisia -
Site Home - TechNet Blogs". Blogs.technet.com. Retrieved
Brand (2017-09-25), Don't Say Velcro, retrieved
Google calls in the 'language police'", BBC, June 20, 2003
^ "Google". Merriam-Webster.
Xerox Ad Pretends We Care About Its
Trademark Rights to Term
Xerox". legalblogwatch.typepad.com. June 30, 2010.
Adobe Systems Incorporated Permissions and
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 from undercutting its
Parma ham". The Times. Retrieved
2009-10-05. CS1 maint: Uses authors parameter (link)
Room, Adrian (1983). Dictionary of Trade Name Origins. Routledge.
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
Initial Interest Confusion
Good faith doctrine
Community Trade Mark
Uniform Domain-Name Dispute-Resolution Policy
Electronic registration marks
Protected designation of origin
Deutsches Patent- und Markenamt
Registered trademark symbol
Service mark symbol
Unregistered trademark symbol