Everyday words can be the death of a trade mark

February 1st, 2015

By Patricia Goliath

A trade mark is a mark, word, name, sign, symbol, device or any combination thereof by means of which manufacturers may distinguish their products from the products of others. The law protects trade marks by allowing them to be registered and exclusively used by the trade mark holder. Traditionally marks are classified in order of descending strength, as arbitrary or fanciful, suggestive, descriptive or generic. Terms that are deemed generic are not entitled to trade mark protection because such words are in the public domain and available for all to use. A generic term identifies ‘a type of product’, not the source of the product, and is not entitled to legal protection. A generic term therefore serves to name the goods themselves, rather than the producer of the product.

Genericide refers to the process by which an often strong, distinctive, non-generic valid trade mark gradually loses its distinctiveness over time to the point where it becomes the common name of the product. This phenomena occurs when the public no longer associates the trade marked term as an indicator of source, but instead perceives it as a description of the product itself, or with the class of products. Once this happens, the trade mark holder no longer has exclusive right to its use, and the mark loses its protected status. It is common for trade marks to retain protection in certain countries, despite being ruled generic in others. In determining whether a mark is generic, Thomas McCarthy’s seminal treatise on trade mark law refers to the ‘who are you, what are you test’. A protectable mark answers the questions ‘Who are you? Where do you come from? Who vouches for you?’ If a mark answers the question ‘What are you?’ then it has lost its source identifying properties, and is generic. (ED Jay ‘Genericness surveys in Trademark disputes: Evolution of species’ (2009) The Trademark Reporter 1119.)

Linoleum is generally considered to be the first trade mark to become a generic term. Frederick Walton coined the name for floor covering in 1864. It was so widely used that the name was ruled generic in 1878 following a lawsuit (Linoleum Manufacturing Co v Nairn LR 7 Ch.D 834 (1878) (Linoleum) in J Powell and L Svendensen Linoleum (2003)). Trade mark holders who have patented products often encourage the public to use their marks as generic words. When consumers eventually use these terms to identify the product rather than its source, the trade mark is in jeopardy of genericide. The manufacturers of Aspirin and Shredded Wheat both had patents on their products. Each product was marketed solely under one mark without offering the public an alternative term with which to refer to the product. In the case of Aspirin, the term had been used generically by the producer and the public for more than a decade. The name was eventually found to be generic because it had become the only name by which the public knew their favourite headache remedy. The only alternative description was acetyl salicylic acid which was not recognised by the public. (Bayer Co v United Drug Co 272 F 505 (SDNY 1921)). Kellogg Co v National Biscuit Co 305 US 111 (1939) in DR Desai and SL Rierson ‘Confronting the Genericism Conundrum’ (2007) Cardozo Law Review 1789 involved the use of the name ‘Shredded Wheat’ with regard to biscuits in pillow shaped form. The court held that ‘Shredded Wheat’ was a generic term for the product since it described it fairly accurately, and was the term by which the product was generally known by the public.

There are many other examples of words once registered as trade marks that were found to be generic such as the words cellophane, brassiere, trampoline, zipper, lanolin and thermos. However, proactive steps to prevent genericide may not always be successful. In King-Seeley Thermos Co v Aladdin Industries Inc 321 F 2d 577, 579 (2d Cir 1963) (http://openjurist.org, accessed 4-12-2014) the plaintiff sued to prevent Aladdin from using the word ‘thermos’ to describe its vacuum bottle containers. The court found that despite the plaintiff’s substantial efforts to preserve the trade mark significance of the vacuum flask ‘thermos’ ‘there was little they could do to prevent the public from using “thermos” in a generic rather than a trade mark sense’. The court noted at 581 that:

‘[the genericide doctrine is] a harsh [doctrine] for it places a penalty on the manufacturer who has made skilful use of advertising and has popularised his product’.

Genericide gives power to the public to appropriate a word as its own, despite resistance by the trade mark owner. The brand name becomes so popular, spreads through the English language and enters the trade mark graveyard. A consequence of genericide is that the public domain benefits by the addition of a new word in the English dictionary. In Mattel Inc v MCA Records Inc 296 F 3d 894 at 900 (9th Cir 2002) (www.leagle.com, accessed 4-12-2014) the genericide process is explained as follows:

‘[T]rademarks [may] transcend their identifying purpose. Some trade marks enter our public discourse and become an integral part of our vocabulary … Trade marks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trade mark becomes a word in our language and assumes a role outside the bounds of trade mark law’.

An indication that a term has become generic is when the term is defined in the dictionaries without reference to the term’s identity as a trade mark. However, the mere presence of a term in a dictionary does not establish that the mark has become generic, especially when the definition includes reference to the trade mark.

The Google trade mark, which is a fanciful mark, was added to the Merriam-Webster Collegiate Dictionary (www.merriam-webster.com, accessed 4-12-2014), which defined ‘google’ with a lower case ‘g’ as a verb meaning ‘to use the Google search engine to obtain information about (as a person) on the World Wide Web’. The Oxford English Dictionary (2006) defines the term ‘google’ as an intransitive verb meaning ‘to use the Google search engine to find information on the Internet’ and as a transitive verb meaning ‘to search for information about (a person or thing) using the Google search engine’ (B Schwartz ‘Google Now A Verb In The Oxford English Dictionary’ (http://searchenginewatch.com, accessed 4-12-2014)).

Google faces the generic dilemma since the terms ‘google’, ‘googling’ and ‘googled’ are commonly used by the public to denote the act of conducting an internet search using the Google search engine. Ironically the first reference to google as a verb was in an e-mail dated 8 July 1998 from Google co-founder Larry Page in which he said ‘have fun and keep Googling’. Google dominates the Internet search industry and remains the global market leader. It is therefore crucial that the mark be protected from becoming synonymous with the word ‘search’. Since 2003 Google has been actively policing its valuable trade mark to combat potential genericide. Google has a program challenging publications which use or define google as a verb or refer to ‘googling’ something.

The Coca Cola Company is known to be aggressively defending its trade mark by actively educating restaurants that Coke means Coca Cola and not Pepsi or some other brand. Any establishment not complying will be requested to stop the deceptive practice, failing which a suit for trade mark infringement will follow. (Coca Cola Co v Overland Inc 692 F 2d 1250, 1252 (9th Cir 1982) (http://openjurist.org, accessed 4-12-2014).

Johnson and Johnson follow its trade mark with the word ‘brand’ in Band-Aid brand adhesive bandage. Fully aware of the dangers of genericide they changed the lyrics of a television commercial jingle from ‘I am stuck on Band-Aids, cause Band-Aid’s stuck on me!’ to ‘I am stuck on Band-Aid brand cause Band-Aid’s stuck on me’. Lego also made a concerted effort to prevent its trade mark from becoming generic and insists that the interlocking plastic building blocks should be referred to as ‘Lego blocks’ or ‘Lego toys’. Lego also informed a Lego Fan site in a cease and desist letter that:

‘our trade marks must never be used descriptively or generically (ie, Legos), but must always be used as an adjective followed by a descriptive noun (eg, LEGO ® toys) and must never be combined with other words (with or without a hyphen) to form a new word’. (DR Desai and SL Rierson op cit at 1840).

Kleenex is a trade mark often considered to be borderline generic. Kleenex took steps to revive its exclusivity by adding the descriptor ‘tissues’ or ‘brand tissue’ to their name. The purpose is to educate consumers that their product is the ‘Kleenex brand’ of tissues, tissues being the generic term.

Blackberry was once at great risk of genericide. People often said that they would check their ‘Blackberry’s’ which translated into the generic name for any wireless e-mail terminal. However, competition from other device manufacturers saved the Blackberry brand, and the perception of the Blackberry is no longer as it was at the height of its success. Similarly, the mark Rollerblade was at risk of genericide due to the public’s reference to in-line skates as ‘rollerblades’ and in-line skating as ‘rollerblading’. The mark has been saved after the owner insisted that the product be referred to as Rollerblade in-line skates.

Many trade marks were destroyed by what is sometimes referred to as ‘death by nouning’, that is, they came to be used as the generic word for the type of object. Google and Xerox are fighting to preserve their names from what is also referred to as ‘death by verbing’ because people are ‘googling’ and ‘xeroxing’ their documents. Vacuum cleaner manufacturer Hoover has lost their ‘verbing’ battle in the United Kingdom because people ‘hoover their carpets’. However, Hoover remains protected in United States. Interestingly, certain megabrands do not easily lend themselves to verbing such as Apple, Sony, Rolex, Microsoft and Yahoo. These names have an alpha structure that survive over time and remain powerful corporate brands. This shows the importance of a carefully explored trade mark to ensure that it is engineered for durability to survive the test of time.

The courts will consider various factors to determine whether a trade marked term is generic such as generic use by the owner, media usage of the term, proof of uncontested widespread use of the trade mark by competitors, dictionary definitions of the term and evidence of consumer use indicating that the public believes the term to be generic. Many protected trade marks are in danger of genericide such as Ping pong (tennis); Frisbee (flying disc); Astroturf (artificial grass); Polaroid (instant photographs); Post it (self-adhesive note paper); Jacuzzi (whirlpool bath), Laundromat (self-service laundry) and Vaseline (petroleum jelly).

Once a trade mark starts to be used as a noun or a verb there is a real risk that its distinctiveness will be diluted, eroded or even lost. Ironically, the most popular marks face the greatest risk of public genericide, because this process often occurs when one specific product has dominance over the entire market. If a mark is not sufficiently protected, the success of the mark may lead to the destruction of the mark. A trade mark owner may contribute to the genericide of a trade mark by misusing it in advertising and labelling, failing to police trade mark infringement and improper use, neglecting to provide a simple generic name for the product, and failing to educate the public concerning the product’s name or generic name. (RH Folsom and Harry L Teply ‘Trade marked Generic Words’ (1980) 89 Yale LJ 1323 at 1327 in VB Pierce ‘If it walks like a duck and quacks like a duck, shouldn’t it be a duck?: How a “functional” approach ameliorates the discontinuity between the “primary significance” tests for genericness and secondary meaning’ (2007) 37 New Mexico Law Review 147). Trade mark holders should diligently police their marks to maintain the source identifying qualities of the mark and be vigilant to prevent generic use of their marks by competitors. There are various precautions to prevent a brand name from becoming generic:

• Select a distinctive, non-generic name for your product or service.

• Always use the product’s generic name with the trade mark (eg, Apple computers; Google search engine). If a new product is introduced for which a generic name does not exist, two names should be coined; the trade mark and the generic descriptor of the product or service.

• Do not use the mark in any way that suggests a common, descriptive or generic meaning.

• Do not use the trade mark as a verb or noun. Trade marks should preferably be used as an adjective, alongside the generic name.

• Never use the mark in a plural or possessive form (eg, kids play with Lego bricks, not Legos).

• Do capitalise the first letter of the mark, or put the whole trade mark in capital letters (Kodak; Xerox; HP).

• The trade mark should stand out from surrounding texts such as in product labels or advertising.

• Monitor your own use of the mark and aggressively police and enforce the trade mark rights.

Patricia Goliath BA LLB (UWC) LLM (UCT) is a judge of the Western Cape High Court.

This article was first published in De Rebus in 2015 (Jan/Feb) DR 39.

De Rebus