Generic trademark#Trademark erosion

{{Short description|Product trademark applied to similar products of a different brand}}

File:Jello sign.jpg" to refer to gelatin dessert]]

A generic trademark, also known as a genericized trademark or proprietary eponym, is a trademark or brand name that, because of its popularity or significance, has become the generic term for, or synonymous with, a general class of products or services, usually against the intentions of the trademark's owner.

A trademark is prone to genericization, or "genericide",{{Cite news |last=Shenker |first=Israel |date=1972-11-20 |title=Trade Names Come and Go and Now There's — Exxon |language=en-US |work=The New York Times |url=https://www.nytimes.com/1972/11/20/archives/trade-names-come-and-go-and-now-theres-exxon-winds-of-change-buffet.html |access-date=2023-12-18 |issn=0362-4331}}{{Cite web |title=genericide |url=https://www.law.cornell.edu/wex/genericide |access-date=2023-12-19 |website=LII / Legal Information Institute |language=en}} when a brand name acquires substantial market dominance or mind share, becoming so widely used for similar products or services that it is no longer associated with the trademark owner, e.g., linoleum, bubble wrap, thermos, and aspirin. A trademark thus popularized is at risk of being challenged or revoked, unless the trademark owner works sufficiently to counter and prevent such broad use.{{cite web|publisher=Harvard Law School|title=Overview of Trademark Law | first = William | last = Fisher | date = n.d. |url=http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm}} "Under some circumstances, terms that are not originally generic can become generic over time (a process called "genericity"), and thus become unprotected."{{cite web|work=Patents 101 |publisher= Hyra IP, PLC|title=How Long Does a Trademark Last? | first = Clifford D. | last = Hyra |url=http://patents101.com/2009/11/how-long-does-a-trademark-last/ | url-status = dead | archive-url = https://web.archive.org/web/20100125000246/http://patents101.com/2009/11/how-long-does-a-trademark-last/| archive-date = 25 January 2010}}{{Cite web |title=Invalidity and revocation (cancellation) |url=https://euipo.europa.eu/ohimportal/en/invalidity-and-revocation |access-date=2023-12-21 |publisher=European Union Intellectual Property Office}}

Trademark owners can inadvertently contribute to genericization by failing to provide an alternative generic name for their product or service or using the trademark in similar fashion to generic terms.{{Cite journal |date=1963-10-01 |title=Entertainment Title Duplication Cases: A Process of Evolution |url=https://www.repository.law.indiana.edu/ilj/vol39/iss1/4 |journal=Indiana Law Journal |volume=39 |issue=110 |issn=0019-6665 |quote=}} In one example, the Otis Elevator Company's trademark of the word "escalator" was cancelled following a petition from Toledo-based Haughton Elevator Company. In rejecting an appeal from Otis, an examiner from the United States Patent and Trademark Office cited the company's own use of the term "escalator" alongside the generic term "elevator" in multiple advertisements without any trademark significance.{{Cite journal |date=1950 |title=Haughton Elevator Company v. Seeberger |url=https://heinonline.org/HOL/Page?handle=hein.journals/thetmr40&id=400&div=&collection= |journal=The Trade-Mark Reporter |volume=40 |pages=326 |quote=(Thus, in the Architectural FORUM for March 1946, appears an advertisement beginning as follows: “Otis elevators Otis escalators." From this it is seen that the word “escalators” is used generically or descriptively and without any trademark significance just as is the word “elevators." Also, in the same magazine for January 1946, on page 184 thereof, appears the advertisement of the Otis Elevator Company with the name “OTIS," in a circle, prominently displayed near the middle of the page, beneath which is this notation in bold letters “THE MEANING OF THE OTIS TRADEMARK." Beneath this, in part, is the following: “To the millions of daily passengers on the Otis elevators and escalators, the Otis trademark or name plate means safe, convenient, energy-saving transportation. To thousands of building owners and managers, the Otis trademark means the utmost in safe, efficient economical elevator and escalator operation.” It is obvious to me from this advertisement that the trademark emphasis is on the word “Otis” and its significant mark because here, again, the word “escalator” or “escalators” is written in small letters and in the same manner and same context as the word “elevator” or “elevators” which obviously has no trademark significance.)}} Therefore, trademark owners go to extensive lengths to avoid genericization and trademark erosion.

In subpopulations

Genericization may be specific to certain professions and other subpopulations. For example, Luer-Lok (Luer lock),{{Cite web |title=The Life and Death of the Luer |url=https://www.mddionline.com/components/the-life-and-death-of-the-luer |access-date=2023-12-19 |website=www.mddionline.com |language=en}} Phoroptor (phoropter),{{Cite web |title=Phoroptor® by Reichert®: Celebrating 100 Years of Making Vision Clearer |url=https://www.reichert.com/en/phoroptor100 |access-date=2023-12-19 |website=AMETEK Reichert}} and Port-a-Cath (portacath){{Cite web |title=Implantable ports |url=https://www.macmillan.org.uk/cancer-information-and-support/treatment/types-of-treatment/chemotherapy/implantable-ports |access-date=2023-12-19 |website=www.macmillan.org.uk |language=en}} have genericized mind share among physicians due to a lack of alternative names in common use: as a result, consumers may not realize that the term is a brand name rather than a medical eponym or generic term.

In pharmaceuticals

{{multiple image

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| header = Aspirin with and without trademark

| image1 = Bayer Aspirin and store-brand generic on Canadian drugstore shelf.jpg

| alt1 = Four boxes of medication on a store shelf above price tags. The two on the left are yellow with "Aspirin" in bold black type and explanatory text in English on the top box and French on the bottom. The two on the right are slightly smaller and white with the word "Life" in the corner inside a red circle. The text, in French on top and English below, describes the medication as "acetylsalicylic acid tablets"

| caption1 = Aspirin for sale in Canada, next to generic store equivalent described as "ASA (acetylsalicylic acid) tablets", since the trademark is still recognized there

| image2 = Bayer and store-brand aspirin containers on US drugstore shelf.jpg

| alt2 = Four plastic bottles of medication on another drugstore shelf above their price tags. The two on the left are yellow with the word "Bayer" prominent in black type; above small type describes the product as "genuine aspirin". On the left are two clear plastic bottles with the Rite Aid drugstore chain logo on their yellow labels, which describe the product as "pain relief aspirin".

| caption2 = Aspirin for sale in the U.S., where the store brand can also be sold as aspirin since the trademark was ruled generic a century ago

}}

Pharmaceutical trade names are somewhat protected from genericization due to the modern practice of assigning nonproprietary names based on a drug's chemical structure.{{Cite web |title=International Nonproprietary Names Programme and Classification of Medical Products |url=https://www.who.int/teams/health-product-and-policy-standards/ |access-date=2023-12-21 |publisher=World Health Organization}} This circumvents the problem of a trademarked name entering common use by providing a generic name as soon as a novel pharmaceutical enters the market. For example, aripiprazole, the nonproprietary name for Abilify, was well-documented since its invention.{{cite web| title = NDA 21-436: Letter to Otsuka Pharmaceutical Co., Ltd. | first = Robert | last = Temple | date = November 15, 2002 | publisher = Food and Drug Administration, United States Department of Health and Human Services | url = https://www.accessdata.fda.gov/drugsatfda_docs/appletter/2002/21436ltr.pdf | archive-url = https://web.archive.org/web/20130822111049/http://www.accessdata.fda.gov/drugsatfda_docs/appletter/2002/21436ltr.pdf | url-status = dead | archive-date = August 22, 2013 }}{{cite press release | title = U.S. Food and Drug Administration Approves Abilify® (aripiprazole) as the First Medication for Add-On Treatment of Major Depressive Disorder (MDD) | date = November 20, 2007 | publisher = Bristol-Myers Squibb Company | url =https://news.bms.com/news/corporate-financial/2008/US-Food-and-Drug-Administration-Approves-ABILIFYR-aripiprazole-for-Add-On-Treatment-to-Lithium-or-Valproate-in-the-Acute-Treatment-of-Adults-With-Manic-and-Mixed-Episodes-of-Bipolar-I-Disorder-With-or-Without-Psychotic-Features/default.aspx}}{{cite journal | title = Focus on Aripiprazole: A Review of its use in Child and Adolescent Psychiatry | first1 = Masa’il | last1 = Greenaway | first2 = Dean | last2 = Elbe | journal = Journal of the Canadian Academy of Child and Adolescent Psychiatry | date = August 2009 | volume = 18 | number = 3 | pages = 250–260 | publisher = Canadian Academy of Child and Adolescent Psychiatry | language = en | pmid = 19718428| pmc = 2732733 }} Warfarin, originally introduced as a rat poison, was approved for human use under the brand name Coumadin.{{cite journal | title = Milestone 2: Warfarin: from rat poison to clinical use | first = Gregory B. | last = Lim | date = 14 December 2017 | journal = Nature Reviews Cardiology | url = https://www.nature.com/articles/nrcardio.2017.172 | doi = 10.1038/nrcardio.2017.172| pmid = 29238065 | doi-access = free }}

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. However, U.S. court rulings in 1918 and 1921 found the terms to be genericized, stating the company's failure to reinforce the brand's connection with their product as the reason.{{cite court |litigants=Bayer Co. v. United Drug Co. |vol=272 |reporter=F. |opinion=505 |pinpoint=p.512 |court=S.D.N.Y |date=1921 |url=https://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm |access-date=2015-09-01 |quote=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.}}

A different sense of the word genericized in the pharmaceutical industry refers to products whose patent protection has expired. For example, 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 erosion

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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,{{cite news | url = https://www.independent.co.uk/news/business/analysis-and-features/genericide-when-brands-get-too-big-2295428.html | title = 'Genericide': When brands get too big | first = Rhodri | last = Marsden | date = 10 June 2011 | work = The Independent | access-date = 20 August 2018}}{{cite web | url = https://www.consumerreports.org/consumerist/15-product-trademarks-that-have-become-victims-of-genericization/ | title = 15 Product Trademarks That Have Become Victims Of Genericization | date = 19 July 2014 | work = Consumer Reports | access-date = 20 August 2018}}{{cite web | url = https://www.thelawyersdaily.ca/articles/3444 | title = Sometimes a trademark is too 'successful' | date = 26 January 2017 | first = John | last = Schofield | work = The Lawyer's Daily | publisher = LexisNexis Canada | access-date = 20 August 2018 | archive-date = 20 July 2021 | archive-url = https://web.archive.org/web/20210720143127/https://www.thelawyersdaily.ca/articles/3444 | url-status = dead }} most often occurring when 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 exceptional recognition. An example of trademark erosion is the verb "to hoover" (used with the meaning of "vacuum cleaning"), which originated from the Hoover company brand name.

Nintendo is an example of a brand that successfully fought trademark erosion, having managed to replace excessive use of its name with the term "game console", at that time a neologism.{{cite web|url=http://www.thelinguafile.com/2012/11/generic-trademarks.html|title=Generic Trademarks | date = 29 November 2012 |website=The Lingua File|access-date=29 August 2017 | url-status = dead | archive-url = https://web.archive.org/web/20170830061553/http://www.thelinguafile.com/2012/11/generic-trademarks.html | archive-date = 30 August 2017}}

Legal concepts

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 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).{{cite web |url=http://www.3com.com/corpinfo/en_US/legal/trademark/prop_usage_tmb.html#1 |work=3Com Legal |title=Trademarks and Brands |publisher=3Com Corporation |access-date=28 March 2010 |url-status = dead |archive-url = https://web.archive.org/web/20090210041955/http://www.3com.com/corpinfo/en_US/legal/trademark/prop_usage_tmb.html |archive-date = 10 February 2009}}

However, in highly inflected languages, a tradename may have to carry case endings in usage. An example is Finnish, where "Microsoftin" is the genitive case and "Facebookista" is the elative case.{{cite web |author=Microsoft Oy |url=http://blogs.technet.com/b/uutisia/archive/2011/11/10/nokia-lumia-800-ensiesittelyss-228-microsoftin-hello-helsinki-tapahtumassa.aspx |title=Nokia Lumia 800 ensiesittelyssä Microsoftin Hello Helsinki! -tapahtumassa | language = fi |work = Microsoft TechNet |publisher=Microsoft |date=10 November 2011 |access-date=2 January 2013}}

= Avoiding genericization =

Generic use of a trademark presents an inherent risk to the effective enforcement of trademark rights and may ultimately lead to genericization.

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 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 television 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."{{Cite web|title=A cost effective way to protect against genericide|url=https://www.genericides.org/cost-effective-way-protect-against-genericide|access-date=September 28, 2020}} 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{{cite news |url = http://news.bbc.co.uk/1/hi/uk/3006486.stm |title = Google calls in the 'language police' |first = Jonathan |last = Duffy |publisher = BBC News |date = 20 June 2003 |access-date = 20 August 2018}} and the Merriam Webster Collegiate Dictionary{{cite web |url=http://www.merriam-webster.com/dictionary/google |title=Google |work = Merriam-Webster.com Dictionary |publisher=Merriam-Webster, Incorporated |access-date = 20 August 2018}} 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 the Internet". The Swedish Language Council received a complaint from Google for its inclusion of {{lang|sv|ogooglebar}} (meaning 'ungoogleable') on its list of new Swedish words from 2012. The Language Council chose to remove the word to avoid a legal process, but in return wrote that "[w]e decide together which words should be and how they are defined, used and spelled".{{Cite web |last=Fanning |first=Sean |date=26 March 2013 |title=Google gets ungoogleable off Sweden's new word list |work=BBC News |url=https://www.bbc.co.uk/news/world-europe-21944834 |url-status=live |access-date=13 April 2024 |archive-url=https://web.archive.org/web/20190617215216/https://www.bbc.co.uk/news/world-europe-21944834 |archive-date=17 June 2019}}

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.{{cite web |url=http://legalblogwatch.typepad.com/legal_blog_watch/2010/06/xerox-ad-pretends-we-care-about-its-trademark-rights-to-term-xerox.html |title=Xerox Ad Pretends We Care About Its Trademark Rights to Term Xerox |first = Bruce |last = Carton |date = 30 June 2010 |work = Legal Blog Watch |publisher=Law.com |access-date = 20 August 2018}}

The Lego Company has worked to prevent the genericization of its plastic building blocks following the expiration of Lego's last major patents in 1978.{{Cite news |last=Austen |first=Ian |date=2005-02-02 |title=Building a Legal Case, Block by Block |language=en-US |work=The New York Times |url=https://www.nytimes.com/2005/02/02/business/worldbusiness/building-a-legal-case-block-by-block.html |access-date=2023-12-15 |issn=0362-4331}} Lego manuals and catalogs throughout the 1980s included a message imploring customers to preserve the brand name by "referring to [their] bricks as 'LEGO Bricks or Toys', and not just 'LEGOS'."{{Cite web |last=Cooper |first=John |date=2023-08-18 |title=Susan Williams: The Most Famous LEGO Employee That Never Existed |url=https://bricknerd.com/home/susan-williams-the-most-famous-lego-employee-that-never-existed-8-18-23 |access-date=2023-12-15 |website=BrickNerd - All things LEGO and the LEGO fan community |language=en-US}}{{Cite web |last=Retroist |title=1985 Lego Catalog |url=https://www.retroist.com/p/1985-lego-catalog |access-date=2023-12-15 |website=www.retroist.com |language=en}} In the early 2000s, the company acquired the Legos.com URL in order to redirect customers to the Lego.com website and deliver a similar message.{{Cite news |date=2005-09-06 |title=Please -- it's LEGO, not Legos |language=en-CA |work=The Globe and Mail |url=https://www.theglobeandmail.com/technology/please----its-lego-not-legos/article1123326/ |access-date=2023-12-19}} Despite these efforts, many children and adults in the United States continue to use "Legos" as the plural form of "Lego," but competing and interchangeable products, such as those manufactured by Mega Brands, are often referred to simply as building blocks or construction blocks.{{Cite web |title=How Mattel Is Challenging Lego's Building Brick Dominance |url=https://fortune.com/2017/04/19/mattel-vs-lego-building-toys/ |access-date=2023-12-19 |website=Fortune |language=en}} The company has successfully put legal pressure on the Swedish Academy and the Institute for Language and Folklore to remove the noun {{lang|sv|lego}} from their dictionaries.{{cite magazine|last=Svensson|first=Anders|title=Orden som försvinner i tysthet|trans-title=The words that silently disappear|magazine=Språktidningen|trans-magazine=The Language Magazine|language=sv|number=3|date=2024|issn=1654-5028}}

Adobe Inc. has experienced mixed success with preventing the genericization of their trademarked software, Adobe Photoshop. This is shown via recurring use of "photoshop" as a noun, verb, or general adjective for all photo manipulation throughout the Internet and mass media.{{cite web|url=http://www.adobe.com/misc/trade.html |title=General trademark guidelines |department = Adobe |publisher=Adobe Systems Incorporated |access-date=2 January 2013}}

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".{{cite thesis |url = http://ethesis.helsinki.fi/julkaisut/oik/julki/pg/rovamo/monopoli.pdf |title = Monopolising Names? The Protection of Geographical Indications in the European Community |first = Oskari |last = Rovamo |publisher = Faculty of Law, Helsinki University |type = Pro Gradu |date = August 2006 |access-date = 28 March 2010 |archive-date = 18 September 2018 |archive-url = https://web.archive.org/web/20180918164153/http://ethesis.helsinki.fi/julkaisut/oik/julki/pg/rovamo/monopoli.pdf |url-status = dead }} 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. 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, then 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, Gouda, and Feta), Pisco liquor, and Scotch whisky are examples of geographical indications. Compare Russian use of "Шампанское" (= Shampanskoye) for champagne-type wine made in Russia.

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 region.{{cite news | first1 = Richard | last1 = Owen | first2 = Valerie | last2 = Elliott | title='Barmy' ruling bans Asda from undercutting its Parma ham | date=21 May 2003 | url =http://www.timesonline.co.uk/tol/news/uk/article1134467.ece | work =The Times | access-date = 5 October 2009 }}{{dead link|date=September 2024|bot=medic}}{{cbignore|bot=medic}} The European Court ruled that pre-packaged ham must be produced, sliced, and packaged in Parma in order to be labeled for sale as "Parma ham".{{cite news | url = http://news.bbc.co.uk/2/hi/business/3043283.stm | title = Asda slams 'ham-fisted' Parma ruling | date = 20 May 2003 | work = BBC News | publisher = British Broadcasting Corporation | access-date = 20 August 2018}}

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:Cornell Law School Legal Information Institute, "[https://www.law.cornell.edu/wex/abercrombie%20classification Abercrombie Classification]" (last visited Feb. 3, 2024)

; "Fanciful" or "coined"

: original words with no meaning as to the nature of the product

; "Arbitrary"

: existing words with little if any reference to the nature of the product or service

; "Suggestive"

: having primarily trademark significance but with suggestion as to the nature of the 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".

References

External links

[https://web.archive.org/web/20090123042428/http://searstower.org/rkrause/brands.html American Proprietary Eponyms, a project by R. Krause, December 1997]

Category:Brand management

Category:Trademark law

Category:Product management

Category:Eponyms