Genericized trademark

A genericized trademark (Commonwealth English genericised trade mark), sometimes known as a generic trade mark, generic descriptor or proprietary eponym, is a trademark or brand name which has become synonymous with the general or formal term for a particular type of product or service, to the extent that it often replaces this term in colloquial usage.

Concepts

One consequence of a trademark becoming generic is that the exclusive rights which may attach to the use or registration of the trademark can no longer be legally enforced. The diminishing or loss of these rights is sometimes known as genericide, although other terms may be used to refer to the process by which a trademark becomes generic. Genericide typically occurs over a period of time where the trademark owner does not maintain or enforce its proprietary rights (eg. by using the mark, or by pursuing infringement action).

This means that the legal determination of whether a mark has become generic will usually arise in the context of an attempt to invalidate or otherwise cancel a registration for a mark before a government trademarks office or registry, or before a court. In this context a genericized trademark is a trademark which no longer serves to uniquely identify the commercial source or origin of a product or service. The terms "genericide" and "genericized trademark" are not terms of art.

As the determination of whether a trademark is a "genericized trademark" in any other context tends to be a subjective assessment, there is some uncertainty as to what the term actually encompasses. Nevertheless, there is a similar degree of "genericity" between a trademark registration which is deemed unenforceable (because the trademark no longer exclusively identifies the trademark owner as the commercial source of its products or services), and a former trademark which is widely considered generic by the public.

It is important to note that regardless of whether trademarks are perceived as being "genericized trademarks", or whether well known trademarks are used in a generic manner, a trademark does not become generic simply as a result of popular usage, particularly if there has been no legal determination on the status of a trademark, and the trademark owner maintains and enforces their rights.

Legal protection

Trademarks, unlike copyrights and patents, must be actively used in order to maintain strong legal rights. By comparison, a copyright or patent holder does not necessarily need to use their creation in order to maintain their rights.

However, a trademark owner must be careful not to lose control of how its trademark is used. If a trademark becomes successful in gaining mind share it may become "generic" through common use. Once this point is reached it may no longer be possible to enforce rights in relation to the trademark.

For example, if a trademark owner does not police the use of its trademark in relation to a new product, by preventing third parties using the trademark to describe their copies of the product, and the general public start using the trademark as the generic name for the product, the trademark may become a genericized trademark. Thomas Edison's mimeograph is a classic example.

Avoiding genericide

Trademark owners should not use their trademark as verbs or noun, implying the word is generic. Likewise, using the trademark as a plural or possessive (i.e. a noun) will imply the trademark is generic (unless the mark itself is possessive or plural, e.g., "Friendly's" restaurants). If the trademark is associated with a new invention, the trademark owner should use a descriptive term for the product that can be distinguished from the trademark for the product.

Where a trademark is used generically a trademark owner may need to take special proactive measures in order to retain exclusive rights to the trademark. Xerox provides one successful example of a company which was able to prevent the genericide of its core trademark through an extensive marketing campaign advising consumers to "photocopy" instead of "Xeroxing" documents. Another common practice amongst trademark owners is to follow their trademark with the word "brand" to help define the word as a trademark. Johnson & Johnson changed the lyrics of their BAND-AID television commercial jingle from, "I am stuck on BAND-AIDs, 'cause BAND-AID's stuck on me" to "I am stuck on BAND-AID brand, 'cause BAND-AID's stuck on me."

As generic use of a trademark is often related to how well-known a trademark has become, some trademark owners mistakenly believe that it is useful to achieve a level of genericity, or may otherwise overlook a certain level of generic use, despite the inherent risk of generic use upon the maintenance of strong trademark rights.

European Union

Since 2003 the European Union has actively sought to restrict the use of geographical indications by third parties outside the EU. Although a GI for specialty food or drink may be generic, a GI is not a trademark because it does not serve to exclusively identify a specific commercial enterprise, and therefore cannot constitute a genericized trademark.

The extension of protection for geographical indications is somewhat controversial because a GI may have been registered as a trademark elsewhere. For example, Parma Ham could constitute part of a trademark registered in Canada by a Canadian manufacturer, which may prevent manufacturers from Parma in Italy using this name in Canada.

Other affected products include Champagne, Bordeaux and many other wine names, Roquefort, Parmesan and Feta cheese, and Scotch whisky. In the 1990s the Parma consortium successfully sued the Asda supermarket chain to prevent it using the description Parma ham on prosciutto produced in Parma but sliced outside the region. See also Protected Designation of Origin.

Disclaimer

Please note that in no event should the appearance on this page of a trademarked (or formerly trademarked) name be construed as affecting any trademark rights a holder might possess in such a name; this page is intended to illustrate the problem rights holders face and have faced through history in protecting their marks, not to contribute to said problem. This page should not be considered authoritative with respect to whether a name is still legally trademarked in any particular jurisdiction.

List of genericized trademarks

The following list comprises those marks which were originally created and used as trademarks, but which have subsequently become synonymous with the common name of the relevant product or service. Marks which appear in this list have become so generic that their former status as a proprietary trademarks is often unknown to the general public. (See also List of proprietary eponyms based on active trademarks.)

If any of the original registrations for such marks have not yet expired or been cancelled, it is unlikely that the registered owners would be able to successfully enforce these registrations.

Allen wrench (or Allen key)- hexagonal screwdriver (A rarity among generic words, 'Allen wrench' is no longer trademarked, but is still capitalized because it is named after a company)
aspirin - ASA (acetylsalicylic acid; remains as a registered trademark in many places around the world in the name of Bayer, but not in the United States)
bikini - two-piece swimsuit for women
brassiere - women's undergarment used for breast support
BX - flexible, metal-armored electrical cable
cellophane - transparent paper
celluloid - film material
cola - soft drink; genericized part of Coca-Cola (see definition 2 at [1] (http://www.m-w.com/cgi-bin/dictionary?book=Dictionary&va=cola))
comptometer - adding machine
doona - Australian brand of duvets
dry ice - frozen carbon dioxide
escalator - moving staircase
formica (plastic) - laminated plastic surface
frisbee - toy plastic flying disc
gramophone - record player
granola - oat and fruit bar
gunk - thick, liquid soap
hoagie - sandwich
heroin - narcotic drug; originally registered by Bayer as a pain reliever
hula hoop - toy hoop; originally made of various materials, generic name trademarked by Wham-O when it was redesigned in plastic in the late 1950's
immunogen - substance that invokes immune response in the body
jungle gym - play structure (from 'Junglegym')
kiwi fruit - formerly known as "Chinese gooseberries"; new name not trademarked, but Zespri trademark later introduced for New Zealand kiwis
LP - long playing record
lanolin - purified, wax-like substance from sheep's wool
linoleum - floor covering
mah-jongg - alternative spelling originally trademarked
merry widow - strapless corset
milk of magnesia - saline-type laxative; Phillip's
mimeograph - reproduction machine
photostat - reproduction machine
plasterboard - formed gypsum building material
pianola - player piano
pogo stick - bouncing stick (trademark was one word, 'Pogo')
spandex - polyurethane fiber; an anagram of "expands" [2] (http://www.m-w.com/cgi-bin/dictionary?book=Dictionary&va=spandex); DuPont later introduced new trademark, Lycra
tabloid - originally a type of medication
tarmac (or tarmacadam) - road surfacing; the word tarmac is sometimes used to refer to airport runways, but properly it is the hardstanding or parking area that is the tarmac
toll house cookie - chocolate-chip cookie. Nestlé lost trademark rights in the 1970s
touch-tone - dual tone multi-frequency telephone signaling
trampoline - sports equipment
Webster's dictionary - the publishers with the strongest link to the original are Merriam-Webster, but they have a trademark only on "Merriam-Webster", and other dictionaries are legally published as "Webster's Dictionary" [3] (http://www.m-w.com/info/faq.htm#webster) [4] (http://www.m-w.com/info/webster.htm)
white-out - correction fluid; derived from the brand name Wite-Out
windsurfer - sailboard
yo-yo - toy
zeppelin - dirigible airship
zip code - postal code (US)
zipper - zip fastener

Former and current trademarks which are often used generically

Some words were originally created and used as trademarks, and may continue in use as trademarks and be actively enforced by their trademark owners, but are generally acknowledged as becoming generic due to increasing generic usage. This is therefore a subjective assessment, as some marks may already have become generic, whereas others may not be widely accepted as being generic.

Terms which are not genericized trademarks

Some common names for products or services are popularly believed to be genercized trademarks, however this in not the case as the names were never originally created or used as trademarks. Some examples are listed below.

Kerosene
Lava lamp — this originally derived from an alteration of the trademark Lava Lite, although lava lamp was subsequently registered as a trademark in the United Kingdom by Mathmos Limited
Montessori — although often capitalized to suggest trademark significance, this name did not originate as a trademark.
Nylon - synthetic polymer invented at DuPont
Spam - pork and ham product and trademark of Hormel Foods, but is not used generically in reference to all brands of canned luncheon meat made from seasoned pork and ham. Rather, the newest definition being: unsolicited commercial e-mail sent indiscriminately to vast numbers of recipients.