Genericide: How Success May Cancel A Trademark

Posted by on Jul 9, 2013

What do the terms “Thermos,” “Aspirin,” and “Yo-Yo” have in common?  They are all very successful products that have actually lost their trademark protection under the Lanham Act due to a doctrine known as Genericide.  In general, when accused of trademark infringement, one of the common defenses is “genericness.”  This defense says that the term is so broad that it doesn’t actually identify a unique source but instead describes an entire class of products.  A term may inherently be generic (“bed”) or may become generic through genericide (“Murphy bed.”)  Here we’ll look at the latter case.

Section 14 of the Lanham act says that “The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become generic.”  In other words, the doctrine of genericide looks at the meaning of the mark to the general public instead of narrowly focusing on the relevance of the mark to purchasers.

Genericide illustrates one of the most fascinating aspects of Intellectual Property (IP) Law – the rights of the public.  When discussing IP, many people focus on the rights of the IP owner – the inventor who gets a patent, the artist who holds a copyright, or the business which registers a trademark.  What many don’t realize is that in the United States, the fundamental policy of IP laws is actually to benefit the general public as well as the holder of the IP right.  A patent is a grant of a limited-time monopoly in exchange for full and complete disclosure on how to make and use the invention.  Once the 20-year patent term is up, anyone can use the invention without paying a cent in royalties.  A copyright is generally good for the life of the author plus a certain number of years afterwards – after which the work enters the public domain and is freely available for anyone to use.

Trademarks may seem a little different from patents and copyrights – the name trademark suggests the function is to purely designate words used in trade.  However, trademark law is just as concerned about the public as the other two branches of IP.  Trademark seeks to protect the public from confusion but it also seeks to prevent the very language we all speak from being appropriated by businesses or individuals.  This is one of the reasons that, as discussed in a prior post, a descriptive mark has to have secondary meaning.  Another aspect of this concern for the public is genericide.

Genericide means that a trademark is so common, so widely used that it has come to describe an entire genus of product, irrelevant of the actual manufacturer.  Someone asking for an ‘aspirin’ is NOT specifically asking for the pill made by Bayer.  Genericide is a doctrine that is sensitive to the way people speak and the evolving nature of language itself.  Many times a trademark that becomes a verb in everyday use risks genericide.  The term Xerox teetered on the brink of genericide until an aggressive advertising campaign just barely saved it.  Google may become the next blockbuster brand to risk genericide.  Even launching an anti-genericide ad campaign is potentially dangerous as the campaign itself is evidence that one’s trademark is approaching genericness.

Genericide is a serious risk once a brand reaches a certain degree of success.  It is important to retain experienced and knowledgeable counsel who can advise you on retaining your valuable trademark as your brand becomes established in the public consciousness.