Death by Genericide

Photo by Jeff Kingma

As we discussed in a previous post concerning distinctive versus descriptive brand names, once you have chosen a name for your brand, it is important to take a step back and consider whether your chosen brand name stands apart from other pre-existing brand names (and whether your brand is even protectable at all).

Generic marks are never protectable as trademarks, for they utilize words that are more than simply descriptive of the brand’s covered goods / services. These are generally terms that the relevant purchasing public understands primarily as the common or class name for the goods or services offered by the brand. This can include terms like RECLINER for armchairs or RUBBISH BIN for trash cans (to name some very basic examples).

Words that are often used by the public, even if initially protectable, can also fall victim to “genericide”—this is where the public comes to understand an otherwise protectable and distinctive trademark to be the name of a product itself, rather than identifying a brand. Here are some real examples of brands that have fallen victim to genericide over years of public misuse:

• You know that strip you put on scrapes and cuts? If you call it a “band-aid,” you are generally misspeaking. Many brands beyond Band-Aid develop and sell these types of first aid products.

• When your lips are chapped, do you apply lip balm or chapstick? Better check the brand! Burt’s Bees doesn’t make “chapstick.” Only ChapStick makes “chapstick.”

• On a hot summer day, have you ever enjoyed a Popsicle brand treat? Or do you refer to any frozen, fruity treat as simply a “popsicle?” Good Humor-Breyers (owner of the Popsicle brand) would prefer the former.

• Have you ever “xeroxed” a document? The answer is “no”—you may have used a Xerox machine to copy a document though!

• When you go to a shopping mall, how do you get from one floor to the next? Via moving staircase, or via escalator? Sorry—I meant via Escalator brand moving staircase?

• When you’re sick, do you grab some facial tissue, or Kleenex facial tissue? Probably just a “kleenex”...right? Which is a brand—not a type of product.

• And then there’s Nintendo...

To be clear, marks that are commonly used as generic terms for goods / services can still be legally registered as a trademark (many still are), but practically speaking, they are not easy to protect. After all, a brand’s trademark portfolio is only considered “strong” if the public associates the given trademarks with the brand itself—not simply as a class of goods / services. Thus, when developing your brand, ensure you make very clear that your goods / services are referred to as branded products, not simply as the goods themselves. It may be very flattering that the public may, over time, use your brand name over and over with a class of products—but you don’t want other brands associated with your products. Enforce early, and take after Nintendo—don’t let your brand get away from you.

For more information on this article and this topic, contact Charles Wallace.

P.S If you’ve missed the Velcro video on trademark genericide, you can see it here!