The Nature of Trademark Genericide
Trademark genericide happens when the public starts using a brand name as a general term for a type of product or service, rather than as a specific brand. Classic examples include “Aspirin,” “Escalator,” and “Thermos,” all of which were once protected trademarks but became generic through widespread use. The process of genericide undermines the legal protections that trademarks provide, potentially allowing competitors to use the once-exclusive terms freely.
Social Media: A Double-Edged Sword
Social media platforms have revolutionized the way information is shared and consumed. They provide businesses with unprecedented opportunities for marketing and brand engagement. However, the very characteristics that make social media powerful tools for brand promotion also contribute to the risk of genericide.
Speed and Reach
In today’s digital age, social media platforms have revolutionized the way brand names spread and gain recognition. The lightning-fast speed and global reach of these networks enable brand names to achieve widespread familiarity at an unprecedented pace. A single viral post, engaging video, or cleverly crafted meme has the potential to catapult a brand name into the consciousness of millions of users worldwide, often within mere hours.
Once a brand name enters common parlance as a verb or noun describing a general action or product category, it becomes increasingly difficult to maintain its protected status. This dilution of distinctiveness not only weakens the brand’s legal standing but can also erode its perceived value and unique market position.
User-Generated Content
Social media platforms thrive on user engagement, prompting individuals to craft and distribute their own content. This participatory environment frequently incorporates brand names, sometimes in ways that inadvertently push those names towards generic usage. A prime example is the widespread practice of using “Google” as a verb for any online search, regardless of the actual search engine employed. This type of casual brand usage can gradually weaken the unique link between a brand name and its associated product or service.
The Process of Genericide
The process of genericide involves several stages, often facilitated by the widespread and casual use of a trademarked term by the public, competitors, and even the media. Here’s a closer look at how this process unfolds:
- Introduction and Popularity: A brand introduces a unique product or service with a distinctive name. As the product gains popularity, the brand name becomes widely recognized.
- Common Usage: The brand name begins to be used colloquially to refer to the product category rather than the specific product. For example, “Google” is used as a verb meaning to search the internet.
- Lexical Adoption: The brand name is adopted into everyday language, often appearing in dictionaries as a generic term. This is a critical stage where the trademark’s distinctiveness is at risk.
- Competitor’s Use: Competitors using a trademarked term generically erodes its distinctiveness, leading consumers to associate the term with a product type rather than a specific brand, causing trademark genericide.
- Judicial Rulings: Courts determine whether the trademark has become generic based on evidence of how the term is used by the public and in commerce. A ruling against the trademark can result in the loss of trademark protection.
Fig: Process of Trademark Genericide
Instances of Genericide
Several well-known brands have experienced trademark genericide, demonstrating the various ways in which this phenomenon can manifest.
Aspirin: Originally a trademarked name owned by Bayer, “Aspirin” was used to refer to Bayer’s acetylsalicylic acid product. However, over time, the term became synonymous with any pain reliever containing acetylsalicylic acid. In 1921, Bayer lost its trademark in the United States, and “aspirin” became a generic term.
Escalator: The term “escalator” was initially a trademark of the Otis Elevator Company. However, due to its widespread use to describe any moving stairway, the trademark was deemed generic by the United States Patent and Trademark Office (USPTO) in 1950. Today, “escalator” is a generic term used to refer to all such devices.
Thermos: The term “Thermos,” once a brand name for vacuum flasks, became so widely used that it lost its trademark status in 1963. Despite efforts by the brand to protect the trademark, the term had become generic, and “thermos” is now used to refer to any vacuum-insulated bottle.
Kleenex: While “Kleenex” is still a protected trademark, it is often used generically to refer to any brand of facial tissues. Kimberly-Clark, the owner of the Kleenex brand, actively works to prevent genericide by reminding consumers and media to use the term “Kleenex brand tissue.”
Interrelationship Between Secondary meaning and Genericide[1]
Secondary meaning and genericide are closely linked phases in the life cycle of a trademark. Secondary meaning refers to the situation where a descriptive term gets closely linked to a particular product or service, resulting in the term being legally protected as a trademark because consumers recognize it. Nevertheless, if this phrase attains excessive success and is extensively adopted by the public to denote the broad range of products or services, it runs the risk of becoming generic. Genericide refers to the process in which a trademark loses its individuality and ceases to function as a unique brand identification. Therefore, if not properly handled, the process of granting trademark protection based on secondary meaning might ultimately result in the word being a generic description, leading to the loss of trademark protection.
Remedies and Strategies to Prevent Genericide[2]
To combat and prevent trademark genericide, brands must adopt proactive strategies and remedies. Here are some effective measures:
- Educating the Public: Public education campaigns are crucial in preventing genericide. Brands should inform consumers about the proper use of their trademarks, emphasizing that the trademark refers to a specific product or service. For example, Xerox Corporation has run campaigns encouraging the use of “Xerox brand photocopier” instead of using “xerox” as a verb for photocopying.
- Correcting Misuse: When a brand identifies misuse of its trademark, it should promptly address it. This can involve sending cease and desist letters to competitors or media outlets using the term generically. Swift action helps prevent the misuse from becoming widespread and entrenched.
- Consistent Branding: Maintaining consistent branding across all platforms is essential. Brands should use their trademarks correctly in all marketing materials, advertisements, and social media posts. Consistent use reinforces the trademark’s distinctiveness and reduces the risk of genericide.
- Trademark Notices: Including trademark notices (™ or ®) alongside the brand name in all instances of use helps remind the public that the term is a protected trademark. This practice reinforces the brand’s legal rights and discourages generic use.
- Monitoring Social Media: Given the influence of social media, brands must actively monitor how their trademarks are used on these platforms. Engaging with users and correcting improper usage in real-time can help maintain the trademark’s distinctiveness. Additionally, collaborating with social media influencers to promote proper usage can amplify the brand’s message.
- Legal Action: In cases where genericide is imminent, legal action may be necessary. This can involve filing lawsuits against parties that misuse the trademark or seeking judicial declarations to reaffirm the trademark’s distinctiveness. Legal action serves as a deterrent to others who might misuse the trademark.
- Trademark Audits: Conducting regular trademark audits helps brands identify potential risks of genericide. These audits involve reviewing how the trademark is used internally and externally, assessing compliance with branding guidelines, and identifying areas for improvement. Regular audits ensure that the brand remains vigilant in protecting its trademark.
The Role of Social Media Platforms
Social media platforms themselves have a role to play in preventing trademark genericide. By implementing policies and tools that help protect trademarks, these platforms can support businesses in maintaining their brand identity.
Content Moderation
Social media platforms can use content moderation tools to identify and address instances of trademark misuse. This includes flagging posts that use brand names generically and providing users with information about proper trademark usage.
Partnerships with Brands
Platforms can collaborate with brands to create awareness campaigns about the importance of trademark protection. These partnerships can involve co-branded content, educational materials, and joint efforts to address trademark misuse.
Legal Provision & Precedents
In the age of social media, where information spreads rapidly and user-generated content proliferates, these measures are more important than ever. Social media platforms can amplify improper usage of trademarks, making it essential for brands to monitor and address misuse promptly.
It is important to note that a trademark does not become generic by default; it can only be declared so by the courts. According to Section 36(1)[3] of the Trademarks Act, 1999, if a particular mark is extensively used by traders as the name of an article or service rather than as a source identifier, the trademark in question becomes vulnerable to cancellation due to trademark genericide. This provision highlights the need for continuous vigilance by trademark owners to ensure their marks are used correctly in all contexts, including on social media. The popularity of a trademark is a double-edged sword in the era of social media. While the ultimate goal of every proprietor is to transform their trademark into a well-known mark and enjoy exclusive protection, the line between a well-known mark and a genericized mark is very thin. In deciding whether a trademark has become generic, courts often refer to the case of Elliott v. Google, Inc.[4] In this case, the court posed a critical question: “whether the primary significance of the term in the minds of the consuming public is now the product and not the producer.” This question is particularly relevant in the digital age, where consumers frequently encounter and use brand names in various online contexts.
Additionally, in Bayer Co. v. United Drug Co.[5], the court held that “What is relevant is not whether some small portion of the public considers the term an indicator of the source, but rather what the ‘entire consuming public’ considers the term to indicate.” This precedent emphasizes that it is not necessary for every person to use the trademark interchangeably with the product name. As long as the general public understands the meaning of a sentence where the trademark is used interchangeably with the product, the trademark is considered to have become generic.
These legal provisions and precedents underscore the importance of proactive measures by trademark owners to prevent genericide, especially in the era of social media. By actively policing the use of their trademarks, educating the public, and enforcing proper usage, brands can protect their trademarks from losing their distinctiveness and legal protection. Social media monitoring, engaging with users to correct improper usage, and collaborating with influencers to promote proper trademark use are all essential strategies in this effort. By taking these steps, brands can safeguard their trademarks against the unique challenges posed by the digital landscape.
Conclusion
Social media’s pervasive influence accelerates the risk of trademark genericide, as brand names can swiftly become commonplace expressions. While these platforms offer powerful brand promotion tools, they also demand vigilant trademark protection strategies. Legal frameworks, including landmark court decisions, provide a basis for combating genericide. Brands must implement proactive measures such as consumer education, consistent brand usage, and thorough social media monitoring to preserve their trademarks’ distinctiveness. Understanding the complex interplay between trademark law and digital communication is crucial for brands to safeguard their legal rights and market position in the social media landscape.
References
[1] ibid
[2] INTA, Famous and Well-Known Marks Committee Develops Best Practices to Avoid Genericide, International Trademark Association (INTA), https://www.inta.org/news-and-press/inta-news/famous-and-well-known-marks-committee-develops-best-practices-to-avoid-genericide/ (last visited June 26, 2024).
[3] Section 36(1), The Trade Marks Act, 1999
[4] 15-15809 (9th Cir. 2017)
[5] 135 F. Supp. 65 (S.D.N.Y. 1955)
Authors: Mohit Porwal (VP – Legal & Finance) & Vidhi Agrawal (Associate)
