Typically, when discussing “generic” marks, we’re looking at one of two situations: either a business owner wants to protect a generic phrase, OR a trademark has become generic. Let’s look at both of those here.
Generic Marks are not protectable by trademark law
In order for a trademark to be valid and protectable, it must be distinctive and capable of identifying the source of the goods or services it is associated with. If a phrase is so commonly used and understood to describe a type of product or service that it has become a generic term, it cannot be protected as a trademark.
Business owners get into trouble when they try to name their business something “search engine friendly”– think “Pediatric Dentists of Virginia” for a pediatric dentist in Virginia (shameless plug to my husband’s practice). That’s likely not going to be protectable as a trademark.
To avoid unprotectable brand names, business owners should pick a mark that is distinctive and unique.
When does a trademark become “Generic?”
A generic trademark is a term that was once a brand name, but has become a common term used to describe a type of product or service, regardless of the brand. In other words, a generic trademark lost its distinctiveness and became synonymous with the product or service it once identified. Basically, the brand got so famous, it became the name of the product!
Once a trademark becomes generic, it can no longer be protected as a trademark, and the owner loses the exclusive right to use the term to identify their brand. This can be a significant problem for brand owners, they will lose control over the use of the brand name the goodwill associated with the brand. This is known as “genericide.” For example, “aspirin” was once a trademarked name for a brand of pain relievers, but over time it has become a generic term that is used to describe any type of pain reliever, regardless of the brand. The same can be said of “escalator,” “thermos,” and “cellophane.”
The legal team at VELCRO is fighting hard against genericide, and has even made a funny video to appeal to the public:
To prevent a trademark from becoming generic, brand owners must use the trademark consistently and correctly, and to take steps to educate the public about the proper use of the trademark. For example, it is common for brand owners to include a trademark symbol (™ or ®) next to the trademarked name, and to use the trademark as an adjective rather than a noun (e.g., “Kleenex tissues” or “Kleenex brand” instead of “Kleenex”).
Too Famous?
In conclusion, a brand can become so famous that its trademark can become generic if its owners are not careful. Once generic, owners can no longer protect it as a trademark, resulting in loss of the exclusive right to use the term to identify the brand. To prevent this, brand owners should use the trademark consistently and correctly, educate the public about the proper use of the trademark, and go after infringers who might be using the mark generically.
Do you have a question about a generic mark or how to prevent genericide? Email us!
