1. How Trademarks Become Generic
Funeral for a Brand:
How Trademarks Become Generic
Welcome. During today’s presentation, we are going to discuss how trademarks can lose their significance as distinctive brands, as well as what can be done to prevent that from happening.

2. PILATES ASPIRIN ESCALATOR CELLOPHANE THERMOS
These terms are a few that are now buried in what could be referred to as the “trademark graveyard.” At one time each of these was a trademark used by a single company to identify and distinguish that company as the unique source of the product or service. Now these terms are generic words in some countries and are available to anyone in that country to use as the name of these products and services.
We’ll take a closer look at how and why these and other trademarks became generic terms for the products and services for which they were used, rather than exclusive source indicators.
But, before we get too far into those topics, it would probably be helpful for us to review what trademarks are, and why we have them.
PILATES
ASPIRIN

3. Trademarks 101
A word, name, slogan, symbol, design, or other designation that identifies and distinguishes the source of a product or service.
A trademark is a “word, name, slogan, symbol, design or other designation that identifies and distinguishes the source of a product or service.” A few such examples are on this slide.
Now, even though trademarks can take many forms – including colors, designs, even sounds – the trademarks that we primarily will be looking at during this presentation are word marks.
Why are trademarks a good thing? In short, they prevent the consumer from being confused about the source of the goods or services. By acting as indicators of source, trademarks promise a consistent level of quality, helping the consumer decide whether to purchase a desirable product or service again or to avoid an undesirable one.

4. Trademarks Must Be Distinctive!
In other words, the relevant consumers must recognize the mark as distinguishing the goods or services of one party from those of others.
To identify and distinguish the unique source of a product, a trademark must be distinctive.
If you think about it, if more than one company can use a word as a trademark for the same product, that word can’t very well identify and distinguish the products of one company from those of another.
Ordinarily, two companies cannot use the same word as a trademark for the same product – at least not without one of them infringing the trademark rights of the other.
But there are some words that everyone is entitled to use in connection with a particular product or service – those words lack the distinctiveness necessary to function as a trademark.

5. The Sliding Scale of Distinctiveness
Fanciful
Kodak® for cameras
Arbitrary
Apple® for computers
Suggestive
Chicken of The Sea® for tuna fish
Descriptive
Park ’N Fly® for airport parking services
Generic
“apple” for apples
Trademarks can be divided into categories based on their degree of distinctiveness. You can envision this scale as a ladder:
At the top are the most distinctive word marks, called “fanciful” marks because they are coined or “made up” words that have no meaning except as a brand. KODAK, for example, has no meaning apart from its trademark meaning. Another example is EXXON.
One rung down on the ladder are “arbitrary” marks. Arbitrary word marks are words that have a common or ordinary meaning, but that meaning is completely unrelated to the product for which the word is used as a trademark. For example, we all know what an “apple” is — it’s a fruit. But in the context of computers, the word apple has no ordinary meaning. Therefore, it is arbitrary when used as a trademark for computers. Although not quite as distinctive as fanciful marks, arbitrary marks are distinctive and strong trademarks.
The next rung down on the distinctiveness ladder are “suggestive” marks. These are terms or phrases that suggest something about the product or its characteristics but do not immediately describe the product. For example, “CHICKEN OF THE SEA” suggests an animal from the sea. So when used as a trademark in connection with tuna fish, “CHICKEN OF THE SEA” is a suggestive mark. Another example is COPPERTONE for suntan lotion. Although suggestive words are somewhat less distinctive than fanciful or arbitrary words, they are distinctive and can function as trademarks.
Another rung down on the ladder are “descriptive” words. These are words that immediately describe a product or its characteristics. Descriptive words are unlike fanciful, arbitrary and suggestive words in that descriptive words are not inherently distinctive. If a word is merely descriptive of a product, then everyone is entitled to use it to describe the product. And, if that’s the case, then the word cannot function as a trademark because it cannot identify and distinguish a unique source of the product.
That said, descriptive words can sometimes acquire distinctiveness as a trademark; that happens when the public comes to understand the words not as describing the product but rather as a brand or trademark for the product. Usually that happens after and as the result of extensive use and advertising of the trademark. For example, the words “PARK ’N FLY” describe airport parking services, but the public has come to understand that PARK ‘N FLY is a brand. Another example is “THE CONTAINER STORE.”
And finally, at the bottom of the ladder are “generic” terms.

6. Generic Terms Words that name a product are “generic.”
A trademark or service mark that becomes generic is no longer entitled to protection. (Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S. Ct. 658, 661, 83 L. Ed. 2d 582 (1985).)
Generic marks are subject to cancellation at any time.
A generic mark lacks protection even if it is incontestable.
Generic terms lack distinctiveness and cannot function as trademarks.
Generic terms actually name a product or service.
For example, what is an apple? Well, if you are talking about the little edible fruit, an apple is … an apple.
Generic terms lack distinctiveness, and cannot acquire distinctiveness, as brands or trademarks for the product or service that they name.
As such, generic terms cannot function as trademarks for those products or services.

7. Generic Terms
Theory – Everyone has a right to use the name of a product to identify the product, so the name can never identify and distinguish a unique source of the product.
Again, if we look at the purpose of a trademark — identifying and distinguishing the unique source of a product — this makes sense. Everyone has the right to use the name of a product or service. So if we all sell apples, we can all say so.
Accordingly, the name of the product identifies the product — not a unique source of the product. So when we tell others we are selling “apples,” we are indentifying the kind of product we sell, not the unique trademark we may use to distinguish ours from others.
Now let’s make sure that we understand what “generic” means.

8. What are some trademarks used for these products?
Just throw out some brand names when you see the picture…
Computers: HP, APPLE, DELL, GATEWAY, etc.
Cars: CHRYSLER, FORD, GM, TOYOTA, VOLVO, etc.
Shoes: “adidas,” NIKE, REEBOK, etc.

9. What are some generic terms for these products?
What are generic terms for these products?
Computer: computer, PC, keyboard, monitor, CPU, etc.
Car: car, auto, vehicle, sedan, etc.
Shoe: shoe, sneaker, tennis shoe, canvas sneaker, etc.
So it is possible for a product to have more than one generic term – car and automobile, for example.
And it is also possible for a term to be generic for one product, but not for another; as we discussed earlier, in the context of fruit, an apple is an apple, but in the context of computers, APPLE identifies a unique source of computers.

10. Can Trademarks Become Generic?
Yes, if the public comes to understand the trademark to be the name of the product itself as opposed to identifying an exclusive source of the product.
If this happens, competitors of the trademark owner may have the right to use the term to name the product.
Most of the generic terms we just considered did not start out as trademarks; they have always been a generic term for the product or service they identify — which brings us to the topic of the day:
Can a trademark become generic? Yes.
If, over time, people come to understand the trademark to be the name of the product, the trademark can become generic.
And if that happens, the word may no longer function as a trademark.
If the word becomes the name of the product, then everyone is free to use it as the name of the product, even the trademark owner’s competitors.
Let’s look at some examples of words that originally were trademarks but became generic terms for products in certain countries. It is important to note that trademark rights vary country by country, so a term may become generic in one country but still receive protection as a trademark in another country.

11. Examples of Trademarks That Are Now Generic Terms
Escalator
Held generic for
moving staircase
Haughton Elevator Co. v. Seeberger
(Otis Elevator Co.), 85 U.S.P.Q. 80
(Comm. Pat. 1950)
“Escalator” for moving staircase.

12. Examples of Trademarks That Are Now Generic Terms
Thermos
Held generic (in the United
States) for vacuum-insulated
bottles
King-Seely Thermos Co. v. Aladdin
Indus., Inc., 321 F.2d 577 (2d Cir. 1963)
“Thermos” for vacuum insulated bottles (but not for any insulated bottle).
Note, however, that THERMOS is still protected as a trademark in some countries, such as the United Kingdom, where consumers recognize it as a distinctive brand and not as the common name for a type of insulated bottle.

13. Examples of Trademarks That Are Now Generic Terms
Cellophane
Held generic for transparent
cellulose sheets
DuPont Cellophane Co. v. Waxed Prods. Co.,
85 F.2d 75 (2d. Cir. 1936)
“Cellophane” for transparent cellulose sheets.

14. Examples of Trademarks That Are Now Generic Terms
Aspirin
Held generic (in the United States) for acetylsalicylic acid pain reliever
Bayer Co., Inc. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921)
“Aspirin” for pain-reliever drug.
Note, however, that ASPIRIN is still protected as a trademark in some countries, such as Germany, where consumers understand it as a distinctive brand from a single source, rather than the common name of a type of pain reliever.
So the lesson here is that words can be the generic name for a product in one country, but not in others …
Since virtually every country with trademark laws recognizes that generic words cannot be trademarks, you can understand how this situation could be problematic if you want your marketing to be consistent throughout the world.

15. More Recently Pilates Held generic for a form of exercise
Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286 (S.D.N.Y. 2000)
“Pilates” for a form of exercise.
As I mentioned a few moments ago, we’ll come back to some of these examples before we’re through and take a closer look at how the trademarks actually became generic.

16. Evidence Considered in Determining Genericness
Dictionary definitions
Generic use by competitors and others in the trade
The trademark holder’s own generic use
Generic use in the media
Consumer surveys
Alternative generic
words
Next, let us consider the evidence required to establish genericness.
In the United States, proof that a term is generic must be established by “clear evidence.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987).
The test for determining whether a term is generic as applied to the goods or as used in connection with the services turns on how the term is perceived by the relevant public. Loglan Institute Inc. v. Logical Language Group, Inc., 962 F.2d 1038 (Fed. Cir. 1992).
A court faced with this issue may refer to any “competent source,” including dictionaries, catalogs, consumer surveys and media reports or Internet websites wherein the term is used in a generic way.
It may also consider the trademark owner’s own use of the term, for example, on the trademark owner’s website and in its marketing materials.
If there are no alternative generic terms for a product or service, that further indicates that a term identifying that product or service may be generic. Again, what else are you going to call that kind of fruit but an “apple,” and if you are calling your new invention a “Zymar,” what is everyone else supposed to call it?

17. Preventing a Trademark From Becoming Generic
To prevent the public from coming to understand the trademark to be the name of the product itself, the trademark owner should use the term properly…
Remember, a trademark becomes generic when the public comes to understand and recognize it as the name of the product or service.
So to keep that from happening, the trademark owner should, first and foremost, always use the trademark in a way that makes it perfectly clear that it is a trademark — not the name of the product.

18. Advertising & Correspondence
Do not use the trademark as the name of the product itself in your own advertising or internal correspondence.
A trademark owner should not misuse the trademark as the name of the product, for example, in its own advertising or even in internal memos or letters. So if you want “Zymar” to be the trademark for your new invention, and not a new generic term for it, do not advertise that “the Zymar is faster than other transponders.” Instead, try “our Zymar nodal transponder is faster ….”
Also, don’t use the trademark itself in the identification of products or services in the trademark application or in a patent application. Claiming that “the Zymar is a new kind of transponder” can help put one foot of that mark in the figurative grave!

19. Plurality
Use the generic term for the product, not the trademark, to show plurality:
Correct: Two Gillette razors
Incorrect: Two Gillettes
Trademarks are adjectives, not proper nouns. If you use them as nouns, you are in effect using the trademark as the name of the product. So, for example, if you need to refer to two or more of your trademarked product in advertising or correspondence, use the generic term for the product — not the trademark — to do so.

20. Not a Verb
Do not use a trademark as a verb. Correct: “Please make copies of this report using the Xerox® copier.” Incorrect: “Please Xerox this report.”
Likewise, do not use a trademark as a verb. Again, that makes it appear that the trademark is something other than a source indicator.

21. Identify the Trademark as Such
Identify the trademark as a trademark by using capital letters or quotes to depict the trademark: BUDWEISER or “Budweiser”
There are other ways that a trademark owner can identify —and educate the public — that the trademark is a trademark, not a generic term.
For example, it is very common to use capitalization to identify a trademark.
You can do this by capitalizing all of the letters of the trademark, or by capitalizing the first letter of each word in the trademark.
You can also use quotation marks to identify a trademark. This is useful for those trademarks that are meant to be depicted only in lowercase letters or with an initial lower case letter— for example, the “adidas” trademark and the “eBay” trademark. But unless your trademark is specifically meant to be depicted in uppercase/lowercase letters, you should always use capitalization to identify the trademark as a trademark.
Whichever option you choose, practice it consistently so that the trademark appears the same way each time it is used.

22. Identify the Trademark as Such
Identify the trademark as a trademark by using a generic term following the trademark: BUDWEISER beer
Likewise, you should use the generic term for the product after the trademark. This emphasizes that the trademark is not the name of the product.
Notice that the example on the screen not only uses the generic term for the product (“beer”) after the trademark (BUDWEISER), it also depicts the trademark in capital letters.

23. Identify the Trademark as Such
Identify the trademark as a trademark by using the word “brand”: BUDWEISER brand beer
Another option is to identify a trademark as a trademark by using the word “brand” immediately after the trademark but before the generic term for the product. Again, this sends an unmistakable message that the trademark is not a generic term.

24. Identify the Trademark as Such
Identify the trademark as a trademark by using the appropriate trademark symbols: Budweiser® beer
There are also special symbols that you can use to identify a trademark.
For example, if you own a federal registration of the trademark in the United States and in many other jurisdictions, you can use the ® symbol; and if you have not registered the trademark, you can use the letters “TM” to identify it as a trademark or “SM” to identify it as a service mark.
Different countries have different rules about when you can use trademark symbols like these. In the United States, for example, you can run into problems if you use the ® symbol and don’t have a registration.
So … if you are not sure which symbol you should use, ask your trademark attorney or trademark administrator.

25. Identify the Trademark as Such
Identify the trademark as a trademark by using the statements indicating that the trademark is a trademark: “Budweiser® is a trademark of Anheuser-Busch, Inc.”
Finally, you can also identify a trademark as a trademark by placing a statement to that effect on product packaging or advertising.
So far we’ve talked about how a trademark owner should not misuse the trademark in ways that make it appear that the trademark is the generic term for the product. And we’ve also talked about techniques the trademark owner can use to identify the trademark as a trademark and to educate the public that it is a trademark.
Some companies have found it useful to publish these and other “proper trademark usage” principles as a company policy. Employees receive training about how to properly use the company’s trademarks and can refer to the written policy when questions arise. This can be a useful tool to create with the advice of counsel.

26. Create a Generic Term for a Product
If the product is new and there are no existing generic terms for the product, create a generic term at the same time you create the trademark.
Once in a while, companies introduce products that are completely new — there are no other products like them on the market.
When that happens, there is a particular danger that the public may come to understand the company’s trademark as the generic term for the product.
The solution? Create a new generic term in addition to the trademark and always use the generic term following the trademark.

27. Create a Generic Term for a Product
If the existing generic term is one that would be complicated or difficult for people to understand, find or create a more simple generic term. Which is easier for people to understand— “acetylsalicylic acid” or “pain reliever”?
Similarly, once in a while a product comes along for which there is a generic term, but the generic term is difficult for the public to understand because it is very scientific or very long — or both.
For example, the scientific name for aspirin is “acetylsalicylic acid.”
In ruling that the word “aspirin” was generic in the United States, the judge commented that while doctors and pharmacists might know what “acetylsalicylic acid” means, average consumers wouldn’t be likely to know what it means and wouldn’t be likely to learn it or use it as a generic term for the product.
So if the only existing generic term for the product is long or complicated or difficult to understand, consider creating and using another generic term.
In the case of aspirin, such terms might have included “pain reliever,” “fever reducer,” “pain medication” or a combination of those terms. It could also have been the abbreviation of “acetylsalicylic acid” – “ASA.” Usually, abbreviations of generic terms are considered also to be generic.

28. Create a New Product Category
If your trademark is at risk of being considered a generic term for a particular type of product, use the at-risk mark for a different product and tout the fact that the mark is a brand for a line of products: ROLLERBLADE for in-line skates ROLLERBLADE for a line of skating equipment (e.g., pads, sticks, helmets, etc.).
In the United States, one way courts have analyzed genericness is to determine whether the term "has come to be understood as referring ... to the genus of which the particular product ... is a species." Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011, 1014 (9th Cir. 1979).
Therefore, by using the trademark with different but related goods, the term is no longer specific to a particular genus of goods.

29. Friendly Letter
If members of the media misuse the trademark as a generic term, consider sending a friendly letter explaining how they misused your mark and asking them to use your trademark correctly.
So far, everything we’ve talked about has been within the trademark owner’s control – how the trademark owner should use the trademark and how the trademark owner should not misuse the trademark.
But what happens when someone else misuses the trademark as the name of the product? Can the trademark owner control that? Maybe.
For example, what if a journalist misuses the trademark as the generic term for the product in an article or broadcast? If that happens very often, it might lead the public to believe that the trademark is the name for the product.
It might be a good idea to send a letter to the journalist and/or the publisher pointing out the error and asking them to refrain from making the same mistake in the future. In some cases, you might even ask them to run a correction or retraction.

30. Consult Your Trademark Counsel
If a competitor misuses the trademark as a generic term, consult your trademark counsel about whether and how to object to the misuse.
If a competitor misuses the trademark as a generic term, it is probably a good idea to consult your trademark counsel.
He or she can advise you about your options, which might include sending a protest letter and/or filing a lawsuit. Your trademark lawyer can also look into and advise you about any possible risks of objecting or suing.

31. Can You “Recapture” a Trademark That Has Become Generic?
Maybe, but only in those very rare circumstances in which the public no longer understands the term to be the name of the product itself . . .
So if a trademark has already become generic, is there anything the former trademark owner can do to “recapture” the word as a trademark?
Maybe, but by the time that a trademark has already slipped into the common language as the name for the product, it is often too late to fix past misuse or to conduct special advertising to educate the public that the term is a trademark.
That said, it may be possible to reclaim the trademark if the public no longer understands the word to be the product name, and again understands the word to identify and distinguish a unique source of the product.
But this would probably take a very long time, be very expensive and it is extremely rare in practice.
The lesson? Always use your trademark properly and identify the trademark as a trademark. Don’t wait until there is a question about whether it has become generic.

32. Recapture SINGER for sewing machines
Singer Mfg. Co. v. Briley, 207 F.2d 519 (5th Cir. 1953)
In fact, there are very few instances in which a trademark became generic and later regained its trademark or brand significance.
It can happen, however.
In 1896, the United States Supreme Court held that the trademark SINGER had become a generic name for sewing machines. By 1953, however, the trademark owner was able to show that the public no longer regarded Singer as a generic name and again recognized it as a brand name.

33. What Went Wrong? Escalator Thermos (in the United States) Cellophane
Aspirin (in the United States)
Now that we’ve looked at some of the things that trademark owners should and should not do to keep their trademarks from becoming generic terms for their products, let’s go back to some of the examples of trademarks that became generic and take a look at what went wrong.
In 1950, the U.S. Commissioner of Patents held that “Escalator” had become generic for moving stairways. In that case, the evidence showed that:
The trademark owner misused the trademark as the generic name of the product in patent applications.
The trademark owner also misused the trademark as a generic name in its advertising. One advertisement, for example, began “Otis elevators, Otis escalators.” By using “escalator” in exactly the same manner as the generic word “elevator,” the trademark owner suggested that “escalator” was also generic. In another advertisement, the trademark owner stated, “To the millions of daily passengers on Otis elevators and escalators, the Otis trademark or name plate means safe, convenient, energy-saving transportation.” While this statement was good use of the OTIS trademark, it was very bad use – generic use – of the ESCALATOR trademark.
The opinion also commented on the fact the trademark owner depicted the term “escalator” in lowercase letters in the same manner and context as the generic word “elevator.” Haughton Elevator Co. v. Seeberger (Otis Elevator Co.), 85 U.S.P.Q. 80 (Comm. Pat. 1950).
In 1963, a court held that the public had come to understand the term “Thermos” as the generic term for vacuum insulated bottles. The evidence in that case suggested that:
The trademark owner misused the trademark in advertising as the generic term for the product. In fact, the court found that the trademark owner had done this intentionally in an effort to popularize the name of the product.
For many years the trademark owner failed to use a generic name along with the trademark. Eventually, the trademark owner realized that its trademark was at risk and began using the generic term “vacuum bottle” with the THERMOS trademark. But the court held that generic use of this term by the public was already too widespread by then for this to make any difference.
Moreover, although the trademark owner objected to competitors’ misuse of the trademark as a generic term, the owner did not make an effort to prevent other third-party use of the mark as a generic term. King-Seely Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963).
In 1936, a court held that the public had come to understand “cellophane” as a generic term. The evidence showed that:
The inventor – the trademark owner’s predecessor – misused the trademark as the generic term for the product. This was one of those situations in which a new product was introduced and there were no existing generic terms. It would have been useful to create a generic term for the product at the same time that the trademark was adopted. For example, a survey conducted prior to trial showed that 88 percent of customers did not know any other name by which they could call the product.
The inventor also misused the trademark as the generic term for the product in patent applications and advertising for the product.
There was also extensive misuse of the trademark in the press, as well as misuse of the mark as the generic term for the product in the trademark owner’s own internal magazine.
The court also observed that the owner depicted the mark in lowercase letters.
Although the trademark owner later added a statement to packaging stating that “Cellophane is a registered trademark,” by that time the damage had been done and the owner was unable to “reclaim” the mark. DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d. Cir. 1936).

34. Examples of trademarks that many people use generically and that could be in danger of genericide, but for their owner’s efforts:
ROLLERBLADE for in-line skates, registered as a trademark in 1985.
KLEENEX for paper towels, registered in 1932, and currently owned by Kimberly-Clark Corporation.
PING PONG, currently registered for a game played with rackets and balls, and for tables especially constructed for a game also known as table tennis.
ZIPPER for a fabric fastener, coined by B.F. Goodrich Company in the 1920s and registered in Currently, the registration is expired. This has, in fact, hit the trademark graveyard.

35. Questions?