July 25, 2016



Genericide: a word that strikes terror in the hearts of any trademark owner or brand manager.

What exactly is genericide? It's the trademark equivalent of homicide. It is when a mark becomes so successful and well known for a given product or service in that it no longer is source identifying. Rather, the mark identifies the class of product or service and has become generic â thus killing the trademark. One can just cry over all that good will and brand equity vanishing once a mark becomes generic.

Although rare, a recent decision by the Trademark Trial and Appeal Board reminds us that genericide remains a real threat to those brand owners lucky enough to have highly successful marks.

Some well-known examples of words that once were valuable trademarks but are now generic and not protectable (and least in the United States) include:

Escalator Otis Elevator Company

Thermos King-Seeley Thermos Company

Yo-Yo Duncan Toy Company

Aspirin Bayer AG

Cellophane DuPont

Trampoline George Nissen and Larry Griswold

Dry Ice DryIce Corporation

Zipper B.F. Goodrich

Vigilant trademark owners take steps to protect their marks to prevent genericide. Careful owners use the generic name of the goods to describe their product in connection with their brand name. Think Band Aid® brand bandages. Or Q-Tips® cotton swabs. If you are fortunate enough to be the first entrant into a product category, create a generic term for the product. Otis Elevator could have advertised ESCALATOR brand moving stairs.

If your mark is federally registered, be sure to use the ® to let the public know. If not, you can still use ⢠or use all caps or a distinctive font to show the world your mark is just that â a mark. For example, APPLE computers or XEROX copiers.

Use care when referring to your mark. Do not use it as a noun, but rather as an adjective. For example, it's not a Kleenex, but it's a KLEENEX facial tissue. Do not use your mark as a verb. Example, do not Google a particular presidential candidate to learn of her qualifications. Instead, conduct a Google® internet search. Check out the Google® rules for proper trademark usage.

Police your mark and object (politely of course) to others' misuse of your mark.

Lastly, if need be, educate the public on how to properly use your mark. Xerox Corporation actively battles genericide by educating the public. Remember its famous ad: "You can't Xerox a Xerox on a Xerox. But we don't mind at all if you copy a copy on a Xerox® copier." Or a trademark lawyer's favorite, "When you use 'xerox' the way you use 'aspirin,' we get a headache."