Jonathan LA Phillips teaches Intellectual Property Law for the Entrepreneur at Bradley University. One of the more interesting topics, according to his students, is trademark genericide. Whether it is the interesting name or the fact that its an interesting concept to pontificate on, the students are more interested than usual. This post briefly explains genericide and provides some tips to avoid it.
As you may know, the primary function for a trademark is to identify the source of goods or services. In exchange for this source identification, which should prevent consumer confusion, society grants a trademark owner a sort-of monopoly over a word, design, color, scent, or other protectable matter. This is the essential trade off - no consumer confusion in exchange for the ownership of a word. Trademark owners exploit this monopoly by restricting their competitors from using their trademark in any way that is likely to confuse consumers.
Once they have a protectable MARK, many trademark owners build brands around it. They market their products and services under the MARK, trying to build up good will, awareness, and generate sales. If they are successful, someone hears about a good and immediately thinks of the MARK. But, what happens if they get too successful?
Aspirin used to be a trademark for a certain source of acetylsalicylic acid. Thermos used to be a trademark for a certain kind of beverage container. Neither identify source of those goods anymore. Both words are generic. Aspirin is just... aspirin. A thermos are just... a thermos. The former MARKS lost their meaning as source identifiers to a company. Accordingly, the trademark owner lost any protectable rights in the word. The MARK died; hence, "genericide."
You might be able to think of other close calls:
- Chapstick (a source identifier for a specific brand of lip balm)
- Xerox (a source identifier for a specific copying machine brand)
- Kleenex (a source identifier for a specific brand of facial tissue)
- Google (a source identifier for a search engine)
These companies carefully tread the line of incredibly successful marketing and becoming generic. Here are a few tips to help you avoid crossing that line:
- Always use a generic description in conjunction with your MARK. For example, thing "Q-Tip cotton swabs" or "Oreo cookies." The first word is the mark. The second is the generic term. Having both shows the dichotomy between source identifier and generic term.
- Do not use your MARK as a verb. Many people say they are going to "Google that." Google's intellectual property attorneys wish they would "conduct a search using the Google search engine."
- Capitalize the MARK as appropriate.
- Put a (R) next to the MARK when you have a registration with the USPTO. Otherwise use the TM next to it. Be sure to put the designation next to the MARK, not the generic descriptor. For example, you might say "Scotch(R) brand adhesive tape.
If you have any further questions or concerns, we encourage you to call our offices for a consultation. We also have a trademark brochure you can access from our Intellectual Property page. It may help you with some of your questions.