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A revealing look at ‘genericide’

When it comes to generic trademarks, there are more risks than benefits
By John Simpson
January 24 2014 issue

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The purpose of a trademark is to identify the source of goods (who makes or sells them), not the goods themselves or any particular feature of them other than their trade source. But occasionally a trademark is used to identify the goods themselves. In other words, it becomes a generic term instead of a brand name.

Examples from over the years include: “zipper” (a trademark registered in 1925 for a clasp fastener used on boots from B.F. Goodrich — who then tried, unsuccessfully, to prevent others from using “zipper” with the fasteners applied to other items); “aspirin” (a brand of anti-rheumatic medicine from Bayer); “band-aid” (a brand of adhesive bandages from Johnson & Johnson); and “zamboni” (a brand of ice resurfacer from the Zamboni Company).

Although there may be benefits to owning a “generic trademark,” they are ultimately outweighed by the risks.

Trademarks associated with once new or innovative commercial products are often used generically when consumers identify the goods by the trademark of whoever was first to popularize or bring them to market — for example, “thermos” (a vacuum flask commercialized by a pair of German glassblowers in 1904) and “rollerblade” (a brand of in-line skates made popular by Rollerblade, Inc., in the early 1990s).

In cases like that, the generic trademark may give its owner a degree of market exclusivity in the product itself, akin to a patent, copyright or registered industrial design — intellectual property rights in the things themselves, not just in the brands under which they are sold. If consumers are using a trademark as a generic term for a product, it can be hard for a competitor to sell them the same product by another name. The generic trademark can, at least for a while, be used to ward off competition.
But there are ultimately disadvantages in owning a generic trademark. Once consumers begin using a trademark as a generic term, it is hard to get them to stop. Just ask Xerox or Google. And once a trademark has become generic over time — what trademark lawyers call “genericide” — it is no longer entitled to protection. Its owner can’t stop others, including direct competitors, from using it in association with their goods. The owner of generic trademark loses control over the brand and, ultimately, loses all of the investments it made in goodwill associated with the trademark.

The Federal Court’s decision in the French Press case, which was recently upheld on appeal, is illustrative of the potential benefits and long-term risks of generic trademarks. In Bodum USA, Inc. v. Meyer Housewares Canada Inc. [2013] F.C.J. No. 1118, the Federal Court of Appeal upheld Justice Richard Mosley’s decision that a registration for French Press as a trademark in association with “non-electric coffee makers” was invalid. The issue in the case was not just whether Bodum’s trademark for French Press had become generic over time, but also whether French Press was already generic for a form of non-electric coffee maker when Bodum registered the term as trademark in Canada in 1997. Justice Mosley found that the term had been generic all along.

Nevertheless, having been the owner of a registered trademark for French Press for over a decade, Bodum undoubtedly enjoyed a degree of exclusivity over the market for “French presses” in Canada. In fact, the issue only came before the Federal Court when Bodum sued Meyer Housewares for trademark infringement for selling its own “French press” coffee makers and Meyer Housewares counterclaimed to invalidate the French Press trademark.

The phenomenon of trademark genericide came up in Twitter Inc.’s recent and highly publicized initial public offering. The company’s filings with the Securities and Exchange Commission included a statement that: “There is a risk that the word “Tweet” could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet, and if this happens, we could lose protection of this trademark.”

So long as consumers avoid posting “short comments” on competing social media platforms because they are called something other than “tweets,” then Twitter’s trademark for the term will shore up its share of the market for this activity. But if “tweet” becomes generic when consumers start “tweeting” on other platforms, Twitter will have little to distinguish itself and ultimately no way to stop competitors from offering their own “tweeting” services.

Generic trademarks are not just relevant to big companies with big brands. A small business with an innovative product that is not patentable or protectable by industrial design may be able to ward off competition by getting consumers to associate the product exclusively with its trademark (so they won’t even recognize the product if it is sold under a different name). But to the extent that it manages to do this, that innovative small business will need an effective trademarking strategy to distinguish itself as a source of the products in the long-term (since competitors will inevitably follow if it’s a good product) or risk having no trade-mark at all.

John Simpson is the principal of Shift Law, an intellectual property and new media firm in Toronto.

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