Genericism – Loss of Trademark Rights

Trademark owners must act vigilantly in order to avoid their trademark becoming generic.

Individuals and business entities cannot obtain trademark protection for the generic terms of their goods or services. For example, a computer manufacturer cannot get a trademark for COMPUTER in connection with manufacturing computers. Apart from not being inherently distinctive, refusing trademark protections for generic terms makes common sense. If businesses could receive trademark rights to generic terms, they are given a monopoly to words that are absolutely necessary to describe a good or service.

Genericism occurs when a trademark has been used as a noun or verb for so long, often by the trademark owner, that it becomes the generic word for the product or service. In other words, what started out as a trademark becomes the generic word for the product in the mind of the public. Genericism, sometimes referred to as genericide, usually occurs to brand names of new inventions. For example, trademarks that became generic include TRAMPOLINE, ESCALATOR, and TELEPROMPTER.

A Xerox ad targeted at consumers to use not use XEROX generically that shows what happens when trademarks are used generically; they die.

The concept of genericism first appeared in a 1921 court case where the famous justice Learned Hand stated that Bayer, the drug company, lost the trademark rights to ASPIRIN because that had become the generic name used in the public for what we all call aspirin today. In particular, the court used evidence that Bayer used the term ASPIRIN as a noun, and not as an adjective. For example, the label on the bottle read “Bayer – Tablets of Aspirin.” Judge Hand this wording “means that these tablets were Bayer’s make of the drug known as ‘Aspirin.’” In other words, Bayer was using ASPIRIN as a noun, not as an adjective describing pain relief tablets. Because Bayer used ASPIRIN as a noun, and the general public considered it to be the generic name of the pain tablet and not a separate brand, Bayer lost their trademark rights to ASPIRIN.

Examples of Bayer and other brands that can now use the word ASPIRIN because it is generic.

Since the 1921 Aspirin case, brands recognize the importance of using their trademarks as adjectives and adverbs and not as nouns and verbs. When brands start to realize the public is more and more frequently using their trademarks as generic words, they can engage with the public to try to get them to begin using the trademark correctly. For instance, the company that owns the trademark ZAMBONI for ice resurfacing machines “The company also asks that Zamboni not be used as a noun … or a verb.” The most notable ad campaign that saved a trademark from becoming generic was done by Xerox to prevent their trademark XEROX from becoming generic for photocopiers and photocopies.

Xerox anti-genericism ads seeking to inform the public that Xerox is not a noun or verb in the successful effort not to prevent XEROX from becoming generic the way ZIPPER and ASPIRIN did.

Do you have any questions or comments about genericism? Leave them below or contact us and we will do our best to help you out.

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