We bring to you a guest post by Harshavardhan Ganesan on the issue of trademark genericide and what companies can do to prevent it. Our previous posts on this topic can be found here and here. Harshavardhan Ganesan is currently an LLM student at the University of California, Berkeley where he is specializing in Intellectual Property Law.
The Other Mass Killing: TM Genericide
Trademark Genericide: The 27 club for Trademarks (“TM”). Every year, the morbidly worded Trademark Genericide claims more names than even the House of Black and White, sending numerous TMs into the dreaded trademark graveyard, the dictionary. ‘Zipper’ for example, which is defined in the Merriam-Webster’s Collegiate Dictionary (11th ed.) has its derivation listed as “Zipper, a Trademark”. Before their final funeral rites are performed, the owners of these TMs try, belatedly, to revive their trademarks before they spiral into the abyss of the public domain. The idea is simple, what was once a robust TM, becomes genericized due to its constant use by the public; people start using the TM to denote a particular product, rather than the particular source of that product. Due to such widespread usage, the company no longer has a right over the TM, since the moniker no longer denotes their particular brand, but rather denotes the class of products in itself.
Examples of these TMs are a dime a dozen, an illustrious list ranging from headache curing medicines like Aspirin, to daily objects like Thermos and Cellophane, to Pilates and even Videotape! As alluded to earlier, names we use in everyday life, like Zipper, used to be a trademark that belonged to one particular company, but journeyed into the public domain. Ironically, the most popular marks in the world are those most likely to be afflicted by the genericide virus. What may seem as an innocent case of mistaken identity between the source and the product, might serve as the swansong of the mightiest of the world’s marks. While some of the Goliath-sized marks have already been buried, some like Xerox, Kleenex, and Yo-yo, are on the steps of the pearly gates.
Cause of death:
Why does Trademark genericide occur? A myriad of possibilities. First, the product might have been the first of its kind, enjoying a monopolistic position in the market, which lead to people associating the trademark with the good rather than the source of the good. Zipper, and Cellophane are good examples of this occurrence. A concomitant reason for widespread genericide, is lack of a suitable substitute to the term in question; case in point, the Escalator, originally a trademark of the Otis Elevator Company. Rather than calling the contraption a type of vertical transportation in the form of a moving staircase, calling the transportation device by its trademarked name, Escalator, was just much easier for consumers, and the U.S. Patent Office rightly ruled that the word “escalator” had become just a common descriptive term for moving stairways.
Another possible reason for TM genericide could be the intransigence of the companies owning the TM. Understandably, TM genericide places these companies in a confounding quagmire. On one hand, the companies want their products to become famous, and well-known, while on the other hand, they want to control how their product is known. As the Second Circuit noted in the Thermos case, “[the] doctrine can be a harsh one for it places a penalty on the manufacturer who has made skillful use of advertising and has popularized his product.” However, most of the companies who’ve lost their trademarks and are in mourning are themselves responsible, not only for skillfully popularizing their products but for inadequate control measures, which allowed their TMs to become genericized. Trampoline, Videotape, Sellotape, all come under this category.
Health Maintenance Program, Keeping your TMs fit and alive:
On the other hand, some companies have taken active steps to prevent their prized brands from losing their exclusive and exalted status. LEGO ™ is a good example of a company that has continuously requested its customers for assistance to avoid the TM genericide virus. On its website, the LEGO company, lets us know that calling the toy bricks LEGOs is an improper use of the term (Much to my younger self’s chagrin), and that the correct plural form is LEGO bricks or LEGO toys. Similarly, Adobe has an entire page dedicated to its Trademark guidelines. They are clear that they do not want us to use the term ‘Photoshop’ as either a noun, verb, or in the possessive form. Therefore, Adobe wants us to say “I used the Adobe® Photoshop® software to create this image”, rather than “I photoshopped this image”.
Apple is another company that has carried out a robust TM protection strategy regarding the use of its TM, “App store” to varying degrees of success. In 2011, Apple bought a suit against Amazon, claiming that the terminology “app store” used by Amazon, belonged to it, and Jeff Bezos & Co. were wrongly using its Trademark to describe their own Amazon store, in which consumers could purchase apps. Amazon and a bevy of companies, like Microsoft, and Nokia countered claiming that the term “app store” had become genericized, like “toy store”, or “book store”. After Apple’s claim for injunction and its subsequent false advertising claim against Amazon were denied, Apple decided to drop the suit. This allowed Amazon to use the term app store unhindered. Consequently, the Australian Federal Court, dismissed Apple’s appeal of a decision denying Apple a TM over the term “app store”, since it is generic. Apple is now left with a decision to make, prosecute other companies and run the risk of losing its TM, or retain its rights and let other companies “infringe” in peace.
India’s tryst with TM genericide probably begins with the Xerox Corporation and their frail hold over the Trademark ‘Xerox’. This has been dealt with in detail here. Additionally, the Madras High Court has dealt with the generic nature of the term “Aachi”, which has been covered here . What both these cases highlight inherently, is the need for a robust TM guideline system that companies must adopt, in order to make sure they retain property rights over their Trademarks. This then brings up the question, what must companies and firms do in order to prevent their TMs from becoming genericized? I venture a guess as to what those guidelines might contain.
How to Avoid the Graveyard:
Obviously, when choosing a TM name, marketing teams love to put their thinking caps on, and come up with a name with enough pizzazz and panache to instantly appeal to the public. However legal teams in such companies aren’t so concerned with the snazziness of the name, as they are with protecting it, issuing multiple guidelines on how the TM must be used. Usual guidelines urge companies to use the generic description of the product along with the product itself.
A quixotic, but TM friendly sentence would read, “I ate an Oreo® cookie while wearing my Adidas® running shoes. Since I failed to lose any weight, I used the Adobe® Photoshop® software program to make myself appear thinner. I took out my Android® device to use the WhatsApp® messaging app and send the image to my friends. I then sent a Xerox® copy to all those who do not own an iPad® tablet or Android® device.” That long winding sentence was my convoluted way of saying that companies need to remember the small nitty-gritties, which can go a long way in protecting their TM, like capitalizing the trademarked word ( Xerox and Kodak, not xerox and kodak), using the TM itself in singular terms, not plural terms ( As alluded to earlier, LEGO® bricks and not LEGOs. Similarly iPad® devices and not iPads) etc.
Verb, it’s what you…Google?
Interestingly, a traditional tenet of trademark genericization is now being challenged. The conventional wisdom is that a trademark is an adjective, and should not be used as a noun or verb. However, in the case of Google® that perception is being challenged, and successfully so. In Elliot v. Google Inc., a case from the United States District Court for the District of Arizona, the domain name owner (Elliot) contended that Google had become a generic term for search engines. It based the argument on the widespread usage of google as a verb, (“to google”). The court, while denying the motion, stated that the domain name owner’s reliance on verb usage as a basis for generality was “misplaced”; even if a majority of the public uses “google” as a verb to refer to the act of searching on the Internet, such usage does not make the term generic because the public still uses “GOOGLE” as a trademark to refer to Google’s search engine. It is interesting to note that Google® has been battling TM genericide ever since the acceptance of the verb “googling” by Webster’s dictionary. They’ve tried to counter this menace by using the lower case form when dealing with the verb (to google, googling), but the upper case form, when dealing with Google as a noun (“ I used Google® to find out who Jon Snow’s parents really are”).
Normatively, the entire situation appears to be baffling, and raises many interesting questions, such as (1) should TM Genericide be allowed in the first place? Should IP regimes promulgate a system in which a company is penalized for being too famous, or in cases like the Escalator, for being pioneers in their fields? (2) Does TM Genericide offset the lack of a temporal limitation for trademark protection? Unlike copyrights and patents, trademarks do not go into the public domain after the expiry of a certain duration, so does this process of entry into the public domain compensate for a lack of temporal limitation on trademarks? (3) Is genericide then merely the process by which the public claims their just deserts for making the mark famous? In such a case, is genericide not the death of a mark, but rather the consideration that the owner agrees to pay the public in exchange for being granted a monopoly right over the mark in the first place?
And finally, (4) under the garb of TM regulations, do companies have a right over how consumers use their marks in the first place? Are these corporations using the TM regime to control how people talk about their products, exercising a sort of “language monopoly”? These are some of the interesting normative quandaries that TM genericide poses. While greater minds can grapple with such pertinent questions, I am content taking a dip in my “whirlpool bath” watching “a magnetic tape used for storing motion images and usually sound” while eating “a water-based frozen snack”. I meant I am going to take a dip in my Jacuzzi watching a videotape while eating my Popsicle, but of course, you understood that the first time around.
Image from here