by Ivan Lipshitz, Adv., JMB Davis Ben-David

In my first part article on “Genericide” published earlier, I discussed the legal concept of  “Genericism” or “Genericide. This  occurs when, because of misuse, a trademark becomes synonymous with the general types of goods with which they are associated and thereby lose their right to trademark protection. In that article I explained how “Genericism” or “Genericide “ occurs and is determined. In this second part article in this series, I will do a deep dive into the methods used to determine trademark “distinctiveness” and trademark strength, known as the “Trademark Spectrum”. I will also give some familiar examples of “Genericide” whilst also exploring the legal standard which courts use to determine if “Genericide” exists with respect to a specific trademark. In my third and final article on this topic to be published at a later date, I will suggest several key avoidance strategies and preventative measures to be adopted to avoid your trademark from becoming an unprotectable part of the English language or  “genericized, a fate that has befallen many famous onetime marks.

The Trademark Spectrum: Determining Distinctiveness and Trademark Strength 

On one side of the Trademark Spectrum the strongest and most easily protectable types of marks are fanciful marks and arbitrary marks because they are inherently distinctive. Fanciful marks (also called “Coined” marks) are invented words with no dictionary or other known meaning other than the meaning a brand- owner associates with the mark.  Examples of fanciful marks include XBOX®, XEROX®, EXXON® and KODAK®. Arbitrary marks are actual words with a known meaning that have no association or relationship with the goods protected. Arbitrary marks are registrable and indeed more likely to get registered than descriptive marks. A good example of a mark in this category is APPLE® for computers, or ORANGE® for cellphones. Moreover, because these types of marks are creative and unusual, it is less likely that others will be using them. Next are Suggestive marks. These are marks, like NETFLIX®, AIRBUS® and KITCHEN-AID® that comprise of wording that suggest certain characteristics of the underlying goods or services without an outright description of the product or services per se. They merely hint at the goods or services but require imagination, thought or perception to reach a conclusion as to the nature of the intended goods or services.  Further down on the spectrum are Descriptive marks. These are words or designs that describe the goods or services, or that tell you about a quality, characteristic, feature, function, purpose or use of the goods or services. Such marks are generally considered “weaker “and therefore more difficult to protect than fanciful and arbitrary or suggestive marks. If the trademark examining attorney determines that a mark is “merely descriptive” then it is not registrable unless it acquires distinctiveness- generally through extensive use in commerce over a 5 -year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness. An example of such a mark is “QUICK – PRINT”® for printing and photocopying services. It immediately brings to mind the type and nature of the service. Generic words are the weakest type of mark and are on the lowest end of the spectrum. Etymologically speaking, a generic term simply refers to a genus, of which a particular product is a species. These are everyday words that everyone has the right to use. They are neither registrable nor enforceable against third parties.  A generic trademark is a mark that is used to identify the products and services themselves instead of the specific source or brand name for the product or service. For example, using trademarks such as “BEST SMARTPHONE” to market smartphones, or “SHOP -RITE” for a supermarket would qualify as generic trademarks.

Examples of Generic Marks 

Many famous trademarks that have become a victim of their own success and have died over time due to genericide include THERMOS, TEFLON, ASPIRIN, ZIPPER, JACUZZI, YO-YO, FRISBEE, PILATES, ESCALATOR, HOOVER AND CELLOPHANE. These were once registered trademarks that have since fallen into the public domain and are now eligible for use by all, including competitors. Some other interesting examples of trademarks that have suffered this fate and become genericized with which you may be familiar can be found in Wikipedia. There are other marks that were once on their way to becoming generic, but were saved this fate due to aggressive advertising campaigns to educate consumers to view such marks as a source identifier rather than  a common name for its goods and services. These include XEROX®, JEEP® , BAND -AID® AND KLEENEX®. These marks are all protected by active trademark registrations and have been spared from genericide, at least for now. 

Requirements to determine whether a Trademark has become Generic

The legal standard for genericness was laid down by the U.S. Federal Circuit in a two-part test set out in the seminal U.S. case of H Marvin Ginn Corp v Int’l Ass’n of Fire Chiefs Inc, 782 F2d 987, 228 USPQ 528, 530 (Fed Cir 1986).  Under this test, to determine whether a mark has become “genericized” and whether the term is used or understood by the consumer public to refer to the genus (category or class) of the products or services in connection with which it is used, a court must first identify the genus of goods at issue and then assess whether the public understands the mark, as a whole, to refer to that genus of products or services. This test known as the Marvin Ginn inquiry is conducted by a court to determine the public’s perception of the term at issue. Evidence of the public’s understanding of the term can be obtained from many competent sources ( for e.g., consumer surveys, the Internet, dictionaries, newspapers and other publications).

In a post -pandemic world ZOOM® has become a common verb and common name for all videoconferencing services and just about every live-stream event where physical attendance is not required or is not a possibility either due to the pandemic or otherwise. The critical question is whether ZOOM® is fast becoming a generic mark and runs the risk of  sliding down the slippery slope to  “genericide”.  Time will of course tell, but I believe in today’s digital world consumers are sophisticated and astute enough to know that they are using the term generically to mean video conferencing generally, and that ZOOM® is a particular platform separate and distinct from many other similar platforms offering internet video- conferencing services and is thus more likely to avoid the fate of genericide.

In a recent U.S. case, Elliot v. Google Inc. – 45 F. Supp. 3d 1156 (D. Ariz. 2014), the Ninth Circuit held that “GOOGLE®” was not a generic term for an internet search engine and was a protectable trademark. This decision re-affirmed that even if a trademark is widely used by the public as a verb it does not mean that the trademark is considered generic. The court held  against the plaintiff (Elliot ) seeking cancellation of the GOOGLE® trademark on the grounds that it is generic and opined that the plaintiff failed to show that the GOOGLE® trademark had become so generic as to have forfeited trademark protection.

 

Genericide” it could be said,  is the price of fame. Do not allow your trademark portfolio to be imperiled by the loss of trademark rights and ensure they are adequately protected and safeguarded.

If any of your trademarks may be vulnerable  to “ Genericide”, and you need assistance to ensure that your brand name or trademarks continue to be legally protected, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.

The first part of this article can be found here: https://jmbdavis.com/knowledgebase/genericide-part-1-when-brand-dominance-can-result-in-loss-of-your-trademark-rights/

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