In some instances, trademarks become so successful they start to represent an entire category of goods. In trademark law, generic terms are not afforded trademark protection. Genericide refers to situations in which the public understands and uses a brand name in a generic way to refer to an entire category of goods which results in the loss of the trademark.
When you have an open wound, do you ask for a BAND-AID® or an adhesive bandage? Similarly, when you need a tissue, do you ask for a KLEENEX® or a tissue? If you asked for a BAND-AID® or a KLEENEX® in those instances, you used a brand name in a generic sense to refer to an entire category of goods as opposed to a specific brand of goods. In essence, you substituted the brand name for the generic category of goods. Companies must walk a fine line of achieving popularity of their trademarks while not becoming too popular that the public perceives their brand as a generic substitution for a category of goods or services.
Genericide of Trademarks
Several terms, commonly used to represent an entire class of goods now, originally started out as trademarks representing a brand for various companies. For example, while the term “aspirin” is a generic term for acetylsalicylic acid now, it started as a trademark of Bayer. In a famous case that set the standard even modern courts follow, the court found if the public understands a trademark to refer broadly to a category of goods and services rather than a brand’s specific good or service, then that company may be at risk of losing its trademark. Examples of other trademarks lost to genericide include escalator, cellophane, trampoline, and laundromat.
So how can a company prevent genericide? The company needs to make it clear that the trademark functions as a source identifier and not as a descriptor for a category of goods or services. Companies use various ways to achieve this. For example, in addition to other methods, Nike® uses its mark on a variety of goods instead of just sneakers.
Kimberly-Clark Worldwide, Inc. brands its products as KLEENEX® brand tissues thus using the trademark as an adjective to describe the broader category of goods. Use of the registered symbol, ®, after the brand name assists in identifying the word as a brand.
Johnson & Johnson similarly marks their packages of adhesive bandages with the wording “BAND-AID® Brand Adhesive Bandages” indicating the mark’s use as an adjective. The label also uses the registered symbol.
Xerox Co. ran an extensive advertising campaign asking consumers to recognize their trademark rights in the term XEROX® . They also used examples where the term was not used as a verb, i.e. “Xerox this paper”. Rather, they prefer use as an adjective, i.e. “This paper was copied on a XEROX® brand machine”. Xerox also worked with dictionaries to ensure the word as defined referred to the trademark as well as the company. Their efforts staved off genericide of the brand thus far.
Velcro Companies tried a unique approach a few years ago to educate consumers on VELCRO® representing a brand and not all hook and loop fasteners. They launched a “Don’t Say Velcro” campaign featuring an entertaining music video. The video, featuring some of the company’s legal team, instructs consumers on the proper use of their mark. So far, their efforts prevented genericide of the VELCRO® mark.
Another tactic used by companies to avoid genericide relates to aggressively policing their mark. Mad Dogg Athletics, owner of several SPINNING® marks related to indoor cycling, aggressively polices its marks to try and avoid genericide of its SPINNING® marks. As noted by my colleague in an earlier post, Peloton offers interactive stationary bike workouts and uses the term “spinning” to refer to them. Mad Dogg sued Peloton for trademark infringement. Peloton countered by filing a petition to cancel the SPINNING® trademark due to the mark becoming generic. They offer outside sources which opine the term “spinning” is not a source identifier that associates with Mad Dogg Athletics. Rather the term is used widely by the public to describe any type of indoor cycling class. We have to wait to see if SPINNING joins other trademarks lost to genericide such as aspirin, trampoline and escalator.
While every business wants their brands to flourish, companies should be aware of potential risks that come with that popularity. If the public starts associating their trademark with an entire category of goods as opposed to as a source identifier, the company risks losing their trademark.
Companies need to take steps to ensure their trademark continues to function as a source identifier and does not become a generic term. Tactics such as using the registered symbol after the mark; using the mark on a variety of goods; making the mark appear in a different font, color, or size as compared to surrounding words; using the mark as an adjective to describe a broader category of goods; educating the consumer on the proper use of the mark; aggressively policing the mark against infringers; and working with the press and with dictionaries to ensure proper use of the mark can all be effective to avoid genericide of a trademark.