How to avoid falling victim to genericide

• Businesses and consumers lose out when a trademark is reduced to an everyday term

Kaajal Nagindas

& Kay Rickelman

Foreign Counsel Spoor & Fisher

Genericide –(n ) the process by which a brand name loses its distinctive identity as a result of being used to refer to any product or service of its kind ”

Genericide of trademarks occurs when a trademark, originally distinctive and associated with a specific product or service, becomes so widely used that it loses its unique status and becomes a common term for the general product or service itself In other words, the trademark becomes generic, lacking the ability to identify and distinguish the source of origin of the goods or services

This happens when people call products by a name that is widely recognised (ie the trademark) rather than by the actual product name

Take this example: “Rachel had to put on a bandaid after she fell while using her rollerblades, since the kleenex she had used was insufficient to wipe away her blood ”

When a trademark becomes generic, it loses its legal protection, as trademarks are meant to identify and distinguish the source of goods or services

When a trademark undergoes genericide, it poses significant challenges for the trademark owner as it can no longer be protected as a trademark, ultimately weakening the brand’ s identity and exclusivity

How Do Trademarks

BECOME GENERIC?

The genericide of trademarks can be attributed to several factors One significant reason is the widespread and consistent use of a trademark over an extended period, resulting in it becoming deeply ingrained in the public consciousness When a trademark becomes synony-

Genericide Can Create Confusion And Diminish The Assurance Of Quality Associated With Specific Brands

mous with a particular product or service, consumers tend to use the trademark as the common, generic term Insufficient efforts by trademark owners to enforce their rights and educate the public about the distinction between the trademark (ie brand name) and the generic term can also contribute to the genericide Genericide also occurs when the trademark owner is the only manufacturer of the product, so consumers end up referring to the product as the brand name

EFFECT OF GENERICIDE

Genericide has significant impacts on both trademark owners and consumers For trademark owners, the loss of distinctiveness and legal protection can be detrimental to their brand’ s reputation and market position

Genericide undermines the ability to differentiate their products or services from competitors, leading to potential loss of market share and decreased brand value Without exclusive rights to their trademark, owners may find it challenging to enforce against infringers, further weakening their position in the marketplace

On the consumer side, genericide can create confusion and diminish the assurance of quality associated with specific brands When a trademark becomes a generic term, consumers may no longer associate it with a particular source of origin, which can lead to uncertainty and a decline in consumer trust

Overall, the impact of genericide highlights the importance of trademark protection and the need for trademark owners to manage and preserve the distinctiveness of their brands

Here are some popular items which people may use to describe the product, instead of using the generic term, which is in italic:

● App originally a trademark owned by Apple for a digital distributing platform;

● Band-Aid a trademark owned by Johnson & Johnson for an adhesive bandage;

● Bubble Wrap a trademark by Sealed Air for cushioned packing material;

● Crock-Pot a trademark by Sunbeam Products for slow cookers;

● Dictaphone a trademark by Nuance Communications for dictation machines;

● Fibreglass a trademark by Owens Corning for glass wool;

● Hoover a trademark by the Hoover Company for vacuum cleaners;

● Jacuzzi a trademark by Jacuzzi for hot tubs;

● Jet Ski a trademark by Kawasaki Heavy Industries for a personal watercraft;

● Lava Lamp a trademark by Mathmos Lava Lamp for a liquid motion lamp;

● Rollerblades a trademark by Nordica Sports Company for inline skates;

● Velcro a trademark by George de Mestral for hook and loop fasteners;

● Styrofoam a trademark by Dow Chemical Company for expanded or foamed polystyrene;

● Post-It a trademark by 3M for sticky notes;

● Play-Doh a trademark by Hasbro for modelling clay;

● Sellotape a trademark by Hinkle Consumer Adhesives for clear adhesive tape;

● Speedo a trademark by Speedo for swim briefs;

● Tipp-Ex a trademark by Tipp-Ex & Co for correction fluid;

● Tupperware a trademark by Dart Industries for plastic storage containers; and

● Thermos a trademark by Thermos GmbH and Thermos LLC for a vacuuminsulated flask

There have been notable instances where trademark owners are preventing genericide and are preserving the distinctiveness of their brands One such example is the brand “Coke” , which has managed to maintain its identity as a cola brand through extensive policing by the proprietor of the brand, Coca-Cola, of incorrect use

A further example is “Google” , where they are trying to ensure that the brand name is not used as a verb, thus protecting it as a trademark for search engines

These cases demonstrate the importance of proactive brand management and

MANAGING YOUR TRADEMARK TO ENSURE IT DOES NOT BECOME GENERIC IS A VITAL PART OF YOUR BUSINESS efforts by trademark owners to prevent genericide and preserve the unique identity of their brands

Strategies To Prevent Genericide

There are several strategies that can be employed to avoid genericide of trademarks:

● Use the trademark as an adjective to the generic term (in other words, add a descriptor after the trademark) such as Vaseline petroleum jelly or Kleenex facial tissues

● Avoid using the trademark as a verb for example, to google

● Avoid using the trademark as a noun for example, hoover

● Do not use the trademark in a plural form for example, Legos instead of Lego bricks

● Add the word “brand” after the trademark for example, John Deere brand

● If possible, offer more than one product or service so that the brand does not become generic for a category

● In marketing campaigns, advertise the general, descriptive term alongside of the trademark

● Use special forms or capitalisation to distinguish trademarks from the generic term

● Monitor use by licensees

● Use the trademark symbol to signify ownership

● Monitor your trademark and protect it against infringement

Proactively managing your trademark to ensure it does not become generic is an important and a vital part of your business Once a trademark becomes generic, it will no longer be protected as a trademark and will be able to be freely used by third parties Back to our sentence about Rachel, we should refer to the trademarks mentioned as adjectives, describing the noun: “Rachel had to put on a Band-Aid® adhesive bandage after she fell while using her Rollerblades® inline skates while going down the road since the Kleenex® tissue she used was insufficient to wipe away her blood