Trade mark genericide occurs when a trade mark becomes generic and loses its legal protection, as trade marks are meant to identify and distinguish the source of goods or services.
“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.”
To safeguard their trade marks, brand owners must proactively implement strategies to prevent genericide. This article explores various strategies to prevent genericide of trade marks.
The 7 Steps to Prevent Trade Mark Genericide
1. Trade Mark as a Trade Mark & Adopt Correct Grammar
A trade mark should be used as an adjective describing a noun, and not as a noun itself. For example, it is a Hoover® vacuum cleaner and not a hoover.
The trade mark must not be used as a verb. For example, you do not xerox a document or google a term. You make a photocopy using a Xerox® copier or you conduct an Internet search using the Google® search engine.
Trade marks should not be used in a plural form. Say “Lego® bricks” and not “legos.”
You can also add the word “brand” after the trade mark, instead of the descriptor, for example, John Deere® brand.
Mattel seems to have done this correctly by referring to Barbie® dolls. The trade mark Barbie ® is used as an adjective with the product descriptor, i.e., dolls. Also, the word “dolls” is used in the plural form and not the trade mark Barbie ®.
Use the trade mark correctly on the packaging, marketing materials, internal and external documents. It is also recommended to use the product description in agreements with third parties.
2. Educate the Public & Consumers
It is important to enlighten and educate the public about what trade marks are and why they matter. Trade marks identify and distinguish products or services of a particular brand. By educating consumers about this definition, they can understand the role of trade marks and the importance of it.
Conduct educational or awareness campaigns to inform the public about the correct use of the trade mark as a brand name, emphasising that it represents a specific product or service, not the entire category. Companies should focus on educating the consumer that their mark is the source of the product, not the product itself, and should not be used as a common noun. For example, Velcro companies released a video across social media asking consumers, through the medium of a song, to say hook and loop and not VELCRO® as the generic term. By doing so, they highlighted that Velcro® is a specific brand and not a generic term for all hook and loop fasteners.
Xerox® also ran advertisements in the newspapers by reminding the public to “photocopy” documents instead of “xeroxing” them, and to produce “photocopies” instead of “xeroxes”, and slogans like, “If you use Xerox® the way you use ‘zipper’, our trade mark could be left wide open” and “If you use Xerox® the way you use ‘aspirin’, we get a headache”.
In the late nineties, the owner of the LEGO® mark conducted a campaign to persuade customers to call its products “LEGO® blocks” or “LEGO® toys.”
3M had a notice telling its customers that Post-it® is a registered trade mark, it must be used as an adjective, followed by the noun “software notes.”
If possible, provide proper usage guidelines for consumers. It would be helpful for consumers to have guidelines on how to refer to branded products or services. Google® published “Rules for proper usage” of all its trade marks. FIFA also published Public Guidelines for Use of its Official Marks, which are updated periodically.
3. Vigilant Monitoring & Enforcement
Trade mark owners should monitor how their trade marks are used both on physical and digital platforms. Regular online searches and keeping an eye on social media can help identify potential threats to trade mark integrity.
When unauthorised trade mark usage is discovered and particularly, if the trade mark is being used in a generic sense, trade mark owners should send cease and desist letters as a warning to infringers. If necessary, pursuing legal action against repeat offenders will emphasise the brand’s commitment to protecting its trade marks.
Coca-Cola® aggressively defends its trade mark by actively educating restaurants that Coke® means Coca-Cola® and not Pepsi® or some other brand. They send people to visit retail establishments which do not serve Coca-Cola® products and specifically order Coca-Cola® or a Coke®. A sample of such product is taken and sent for testing, and if such beverage is not a Coca-Cola® product, notice to stop such deceptive practices is served to the establishment, and in cases where the practices continue even after the notice, trade mark infringement proceedings are launched (Coca Cola Co v Overland Inc 692 F 2d 1250, 1252 (9th Cir 1982).
As an alternative to writing cease and desist letters, the lawyers of Kleenex® launched a social media campaign in which they thanked the general public for saying “KLEENEX® brand tissue”.
If your trade mark is being used incorrectly, it is also possible to contact publishers of dictionaries to discuss the definition of your trade mark in their publication and to request that it is made clear in future editions that the mark is a trade mark.
Article 12 of EU Trademark Regulation (2017/1001) states the following in relation to the reproduction of EU trade marks in dictionaries:
“If the reproduction of an EU trade mark in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the EU trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark”.
4. Distinctive Marketing & Branding
Effective marketing and branding strategies play a crucial role in preventing genericide.
To prevent a trade mark from being considered too generic, the brand must indicate distinctive qualities that set it apart from competitors. Brand owners must develop unique brand messaging and storytelling that resonates with consumers, strengthening the emotional connection with the trade mark. An example would be Amazon®’s tagline, “A to Z.”
In marketing campaigns, advertise the general, descriptive term alongside of the trade mark. From the beginning, if you draw a clear distinction between your trade mark and the product or service it represents, the chances of your trade mark becoming generic are lower. For example, if you manufacture recliners under the name ABC®, make sure the advertisement reads something like ABC®: COMFORTABLE RECLINERS.
When launching a new product, introduce not only a brand name but along a generic name of the product as well, to properly separate the brand name from the name of the product itself. If an existing generic term is complicated or difficult for people to understand, create or find a simpler one. If the product is new and there is no existing generic term, create one. This will also be useful in cases of genericism associated with patents. Otherwise, there is a strong risk of confusion between the trade mark and the product.
The use of the trade mark must be particularly monitored during advertising campaigns. Do not allow abbreviations, plurals, or apostrophes with the trade mark. The trade mark should be distinguished from the surrounding text by capitalising the entire name, using a distinctive typeface or by capitalising the first letter.
Another good practice is to use the TM/SM symbol (for unregistered trade marks) or ® symbol (for the registered trade mark) to ensure that it is seen as a trade mark rather than a generic term.
5. Introducing New Product Lines/Services & Building a Diverse Brand Portfolio
Another strategy that can be used to prevent trade mark genericide is the use of the trade mark in connection with more than one product. Creating a portfolio of trade marks for different product offerings helps protect the brand from becoming a generic term for one product. Consumers will recognise each trade mark as a distinct entity, preserving their individual identities.
For example, Gillette® extended to shaving supplies along with razors. BAND-AID® was originally registered for use on bandages, but it is now used for foot care products and antiseptic washes & sprays. Nike® is used on sneakers and a range of sports clothing. Vaseline® added body lotions in addition to their line of petroleum jelly. Colgate® is used on toothbrushes and toothpaste.
6. Partnerships and Licensing
If you operate as a franchise and / or have licensed your branding to any licensees, then you could seek to enforce tighter control over the licence agreements in place to deal with any generic issues on a wide scale.
Prepare a standard, written explanation for correct usage of your mark that can easily be distributed to your licensees, like the proper usage guidelines for consumers.
Companies like Xerox® take such steps and go even further by requiring their licensees that their name not be used as a verb. Their licensing agreements for example, require businesses to refer to the action their products serve as “copying” rather than “xeroxing.” They do so because it is crucial to educate not just the consumer, but also the company’s -distribution network of the proper and intended use of the mark.
7. Generic in Some Countries While Not in Others
While a trade mark may become generic in some countries, it need not be generic in other countries. For example, Aspirin® is still a trade mark for acetylsalicylic acid by Bayer in about eighty countries, including Canada and many countries in Europe, but declared generic in the USA, UK, France, and Russia.
Proactively managing your trade mark to ensure that it does not become generic is an important and a vital part of your business. Once a trade mark becomes generic, it will no longer be protected as a trade mark and will be able to be freely used by third parties.
Key takeaway: we should refer to trade marks as adjectives, describing the noun.
Instead of saying:
“Rachel had to put on a band-aid after she fell while using her rollerblades since the kleenex she used was insufficient to wipe away her blood.”
We should say:
“Rachel had to put on a Band-Aid® adhesive bandage after she fell while using her Rollerblades® inline skates since the Kleenex® tissue she used was insufficient to wipe away her blood.”