Too Much of a Good Thing: How Genericide Sends Trademarks to the Graveyard

by Jacob Metzger, Associate Member, University of Cincinnati Law Review Vol. 91

I. Introduction

At first glance, the terms yo-yo, escalator, aspirin, trampoline, and thermos all appear to have nothing in common with one another; however, all have one similarity.¹ Each term was originally a made-up word for use in a trademark and not the name of an actual product—until genericide killed their trademark protection.² Genericide is a process that eliminates a trademark’s protection when consumers begin to identify the mark not with the source, but with the good itself.³

For instance, a thermos was originally called a vacuum sealed bottle; however, because of Thermos’ aggressive marketing, consumers began to identify thermos as the bottle and not the brand behind it.⁴ Thus, Thermos lost their trademark because the trademark “thermos” had become the product.⁵ Currently, many trademarks are fighting to hold their trademark and are using advertising and marketing to differentiate themselves from the product.⁶ Without such efforts, the owners of these brands may find themselves grabbing a kleenex instead of a Kleenex® brand tissue as trademarks are lost to the public domain via genericide.⁷ This article discusses brands’ attempted efforts to fight genericide and prevent their products from losing trademark protection. Section II explores the background behind trademark law and genericide and further details the steps some brands have taken to prevent genericide from occurring. Section III provides an argument that brands need to continue to provide combative advertising to prevent marketing efforts from undermining their brands and destroying their trademarks.

II. Background

A trademark is used to identify a source of a product or service.⁸ Trademarks can be anything, so long as the mark provides a source function.⁹ For instance, trademark protection has been found in words, sounds, smells, flavors, and in the configuration and design of products.¹⁰ The legislature used their commerce power to establish federal trademark protections in the Lanham Act.¹¹ The intent of the Lanham Act was to provide protections to source identifiers so consumers would not become confused when purchasing goods and to prevent a mark holder’s goodwill from being infringed upon.¹² Federally, a mark must be inherently distinctive or acquire secondary meaning to become distinctive, then the mark will receive trademark protection.¹³ In the landmark case, Abercrombie & Fitch Co. v. Hunting World, Inc., the Second Circuit devised a spectrum to determine how a mark could be classified as inherently distinctive.¹⁴ This spectrum—ranging from ineligible for protection to potentially eligible for protection—classifies words as generic terms, and marks as descriptive, suggestive, fanciful, or arbitrary.¹⁵

Generic terms simply describe the object. For example, apple is a term for the fruit named apple and is a generic term.¹⁶ Generic terms can never be protected.¹⁷ Descriptive marks merely describe a potential feature of the product.¹⁸ For instance, the term “Oatnut” for bread would describe bread that had oats and nuts.¹⁹ Descriptive marks require secondary meaning to be protected.²⁰ Secondary meaning is a consumer’s association with the mark to the product, such that it would be recognizable by the consumer.²¹ This association is regularly established with advertising.²² Secondary meaning can be established in court for unregistered marks or during registration with the United States Patent and Trademark Office.²³

Suggestive word marks merely suggest some aspect of the good without a direct description.²⁴ Suggestive marks need no secondary meaning because they are inherently distinctive.²⁵ Arbitrary marks are terms that have almost no association with the product, but are still words.²⁶ For instance, Apple for computers is an arbitrary mark.²⁷ Lastly, fanciful marks are made-up terms.²⁸ For instance, Kodak for cameras and Viagra for an erectile disfunction drug are fanciful marks.²⁹ Fanciful and arbitrary marks receive protection because they are inherently distinctive; thus, do not require secondary meaning. However, it is possible for the marks to lose their protection.³⁰

Trademark protection may be lost through a process known as genericide.³¹ Genericide is when consumers begin to identify the mark not with the source, but with the good itself.³² The Lanham Act provides for genericide through its definition of abandonment, which includes acts that cause the mark to become the generic name for the good or service that it is used to identify.³³ In Haughton Elevator Company, the Trademark Trial and Appeal Board determined that the term “escalator” was recognized by the general public as the name for a moving stairway and not the source.³⁴ Accordingly, the Board cancelled Haughton Elevator Company’s use of the mark “escalator” after fifty years of registration.³⁵ This is not a rare occurrence: terms such as cellophane, trampoline, yo-yo, brassiere, and aspirin had once been registered trademarks.³⁶

Courts use consumer opinion in determining whether a trademark has identified the product and not the source.³⁷ Judge Learned Hand created the dispositive test to determine whether the trademark “Aspirin” had undergone genericide in Bayer Co. v. United Drug.³⁸ In Bayer, the court merely asked, “What do the buyers understand by the word for whose use the parties are contending?”³⁹ If buyers generally understand aspirin to be the source identifier, then the trademark stands.⁴⁰ However, if buyers understand aspirin as the product, the trademark loses its protections.⁴¹ In this case, the court had determined that the trademark “Aspirin” had undergone genericide and the mark lost its protection.⁴² The application of this test has been simplified further and been called the “Who are you / What are you” test.⁴³

At first sight, genericide appears to work contrary to the purposes of trademark law; however, it directly advances the interest of the Lanham Act.⁴⁴ Trademark law functions to reward a brand for building goodwill using a source mark. Arguably, in punishing a consumer who develops such a strong goodwill with a brand that the consumer confuses it for an actual product, the law is punishing a mark holder for simply being effective.⁴⁵ However, the main purpose of trademark law, which triumphs over the value of rewarding marketers’ efforts, is to identify a source good.⁴⁶ Thus, genericide balances the interests of the consumer and the mark holder by giving the mark holder the opportunity, while they are holding the mark, to prevent the consumer from associating the mark with the product by using advertising.⁴⁷

Brands use combative advertising to deter genericide from occurring to their products.⁴⁸ For instance, Velcro created a viral and vulgar musical production, sung by actors cast as lawyers, to remind the consumer that their product is a “hook and loop” and Velcro is the name of their brand.⁴⁹ Some brands use more discreet efforts. For example, Xerox uses their brand name as an adjective to describe a copier rather than a verb describing the copying process.⁵⁰ Some brands, like Nike, place their trademark on goods other than shoes to differentiate the brand from the shoes.⁵¹ Kleenex has largely followed Velcro’s more aggressive approach by producing an appreciation post on Instagram to thank consumers for saying “Kleenex® Brand Tissue” as opposed to “Kleenex.”⁵²

III. Discussion

The recent actions by Kleenex and Velcro to distinguish their brands from their products are an effective maneuver at preventing the trademark phenomenon known as genericide; however, branding must go even further. While the marketing Velcro released was effective to differentiate the product from the source, the video was released in 2017. Meanwhile, Kleenex has a relatively limited audience for its Instagram posts.⁵³ Continued engagement is imperative because the “Who are you / what are you” test does not consider the merit of attempts to make a brand different from a product; it is solely concerned with consumer recognition.⁵⁴ Velcro and Kleenex’s campaigns, while noticeable, must be sustained with constant marketing campaigns to educate the consumer.⁵⁵ A few social media posts thanking consumers are unlikely to reach the minds of the millions of consumers who purchase Kleenex® brand tissues or Velcro® brand hook and loop.⁵⁶

Other brands, such as Nike, have created a stronger association between the consumer and the source identifier of the brand by placing their mark on products outside of Nike shoes.⁵⁷ Nike produces a plethora of different merchandise aside from shoes, such as shirts, clothing, and other sportswear.⁵⁸ By expanding their portfolio outside of shoes, there is less likelihood that the consumer will identify their product with their Nike’s source mark, offering a stronger protection against genericide.⁵⁹ Like Nike, Kleenex and Velcro should diversify their product and advertising portfolios further, so that the consumer can identify their products outside of the markets they are concentrated in.⁶⁰

IV. Conclusion

Trademark law serves to protect the consumer from confusion. In doing so, trademark law has created the legal mechanism known as genericide.⁶¹ Genericide creates a popularity problem for brands, which if not combated, results in the nullification of a trademark’s protections.⁶² Brands such as Velcro and Kleenex must utilize combative advertising—otherwise, their marks will likely visit the trademark graveyard, losing millions of dollars and decades of brand recognition.⁶³

Cover Photo generated by DALLE·2 AI System

Jacob T. Metzger

Jacob Metzger is a 3L at the University of Cincinnati College of Law. Jacob received his bachelor's degree in Paralegal Studies at the University of Toledo with a focus in business and communications. Jacob is the editor-in-chief of the University of Cincinnati College of Law Intellectual Property and Computer Law Journal. He joined Law Review to write about consumer protection, intellectual property, advertising law, technology law, and topical topics.

References

1
John Dwight Ingram, The Genericide of Trademarks, 2 Buff. Intell. Prop. L.J. 154 (2004).
2
Id.
3
J. Thomas McCarthy, McCarthy on Trademarks § 12:1 (5th ed. 2022).
4
King-Seeley Thermos Co. v. Aladdin Indus., 321 F.2d 577, 581 (2d Cir. 1963).
5
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6
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Id. § 12:1.
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McCarthy, supra note 3, § 3:2.
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Trademark Genericide – How Bad Grammar Kills a Brand, Gibbel Kraybill & Hess LLP, https://gkh.com/news/2019/10/trademark-genericide-how-bad-grammar-kills-a-brand/ [https://perma.cc/FWM7-HMAH].
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53
Id.
54
Filipino Yellow Pages, Inc. v. Asian Journal Publs., Inc., 198 F.3d 1143, 1147 (9th Cir. 1999); Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1391 (9th Cir. 1993).
55
Bayer Co. v. United Drug Co. 272 F. 505, 509 (S.D.N.Y. 1921).
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Statistica, US Population: Which Brands of Facial Tissues Do You Use Most Often? Statistica Rsch. Dep’t (June 23, 2022), https://www.statista.com/statistics/275635/us-households-most-used-brands-of-facial-tissues/.
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60
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63
McCarthy, supra note 3, § 12:29.

I. Introduction

II. Background

III. Discussion

IV. Conclusion

Author

References