Genericide is what happens when a brand name becomes the everyday name for a type of product, so the public no longer sees it as identifying one company. A genericized trademark loses its protection: under 15 U.S.C. § 1064(3), a federal registration can be cancelled at any time if the mark becomes the generic name for the goods or services it covers. Whether that has happened turns on the primary significance of the term to the relevant public.
Genericide (also called genericization) is a risk that comes with success: the more a brand dominates a new product category, the more likely people are to use its name for the category itself.
The Spectrum of Distinctiveness
Trademark law sorts words and symbols into categories based on how well they identify a source. The framework comes from Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), and the Supreme Court followed it in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). From strongest to weakest:
- Fanciful: Invented words with no meaning apart from the brand.
- Arbitrary: Real words used for unrelated goods, such as a fruit name used for computers.
- Suggestive: Terms that hint at a quality of the product and require some imagination to connect.
- Descriptive: Terms that directly describe a feature, quality, or purpose of the product.
- Generic: The common name for the product or service itself.
In Two Pesos, the Court explained that suggestive, arbitrary, and fanciful marks are inherently distinctive and protectable without proof of secondary meaning, while descriptive terms need acquired distinctiveness, known as secondary meaning. Generic terms sit outside the system entirely. For a deeper walk through each category, see our explanation of the trademark strength spectrum and our comparison of distinctive and descriptive marks.
What Is a Generic Trademark?
“Generic trademark” is a bit of a contradiction, because a generic term cannot function as a trademark at all. A generic term names a class of goods or services rather than a particular source within that class. No business can own the exclusive right to call a product by its common name, because competitors need that word to tell customers what they sell.
A term can be generic in two ways. Some terms are generic from the start, such as an attempt to claim the ordinary word for a product. Others begin as valid, even famous, trademarks and become generic over time. That second path is genericide.
The Supreme Court addressed generic names in Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). The Court held that “shredded wheat” was the generic name of the product, so no exclusive right to it could be acquired, and that when the patents on the product expired, the public gained the right to use the name by which the product had become known.
How Trademarks Become Generic
Genericization usually happens gradually. Common contributing factors include:
- A new kind of product with no convenient common name. When a company introduces something new, consumers may adopt the brand name because nothing simpler exists.
- Long periods of exclusivity. A patent or first-mover advantage can leave the public with only one name for the product, as in Kellogg.
- The owner’s own generic use. Under 15 U.S.C. § 1127, a mark is deemed abandoned when any course of conduct of the owner, “including acts of omission as well as commission,” causes the mark to become the generic name for the goods or services. Advertising that uses the brand as a noun or verb can contribute.
- Media and public usage that goes unchallenged. Dictionaries, news coverage, and competitors using the term generically all shape how the public understands it.
The Legal Test: Primary Significance to the Relevant Public
Section 14(3) of the Lanham Act, codified at 15 U.S.C. § 1064(3), supplies both the cancellation ground and the test. It provides that a registered mark shall not be deemed generic “solely because such mark is also used as a name of or to identify a unique product or service,” and that “the primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test” for deciding whether a registered mark has become generic.
Put simply, the question is what the term mainly means to the people who buy the goods or services. If they understand it mainly as the name of the product category, it is generic. If they understand it mainly as a brand that distinguishes one seller from others, it remains a trademark, even if some people sometimes use it loosely.
Elliott v. Google: Verb Use Is Not Automatically Generic
In Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017), the plaintiffs argued that GOOGLE had become generic because people use “google” as a verb meaning to search the internet. The Ninth Circuit disagreed. It held that verb use does not automatically constitute generic use, and that a genericide claim must relate to a particular type of good or service. The right question was whether the primary significance of “google” to the relevant public was as a generic name for internet search engines, or as a mark identifying the Google search engine in particular.
USPTO v. Booking.com B.V. (2020)
In United States Patent and Trademark Office v. Booking.com B.V., decided June 30, 2020, the Supreme Court ruled 8-1 that “Booking.com” was not generic. The USPTO had argued that combining a generic term with “.com” always produces a generic term. The Court rejected that per se rule, holding that whether a “generic.com” term is generic depends on whether consumers in fact perceive the term as the name of a class or as a term capable of distinguishing among members of the class.
The Court also noted that evidence of consumer perception can include not only consumer surveys but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning. That list works as a practical checklist for any brand owner assessing genericide risk.
Examples of Genericized Trademarks From the Case Law
Lists of “genericized trademarks” circulate widely online, and many entries are inaccurate. The following examples are documented in court decisions:
- Aspirin. In Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921), Judge Learned Hand asked what buyers understood by the word. He found that “Aspirin” still indicated Bayer’s product to manufacturing chemists, physicians, and retail druggists, but that ordinary consumers understood it only as the name of the drug. The injunction was split accordingly, and the defendant could sell to the general public under the name “Aspirin.”
- Thermos. In King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963), the Second Circuit affirmed that the major significance of “thermos” was generic for vacuum-insulated bottles. The decree still left King-Seeley rights in the capitalized “Thermos” mark, while requiring Aladdin to use a lowercase “thermos” preceded by “Aladdin’s” and barring it from using “original” or “genuine” with the word.
- Shredded wheat. In Kellogg, discussed above, the Supreme Court held the term generic and free for competitors to use.
Popularity alone does not destroy a mark. What matters is whether the public’s primary understanding of the word has shifted from the brand to the product.
Cancelling a Generic Registration
Because genericness is a ground for cancellation “at any time” under § 1064(3), a competitor can challenge even a long-registered mark on that basis. Challenges to registrations are typically brought by filing a petition to cancel with the Trademark Trial and Appeal Board, and our overview of trademark cancellation proceedings explains how those cases work. Genericness can also come up as a defense when a brand owner sues for infringement. Brand owners facing either situation should gather usage evidence early, because the inquiry is intensely factual.
How Brands Prevent Genericide
Genericide is preventable, but only with consistent effort that starts inside the company. Practical steps include:
- Use the mark as an adjective. Pair the brand with the common name of the product, such as “BRAND tissues” rather than “a brand.” Avoid using the mark as a noun, a verb, or in plural or possessive forms.
- Give the public a generic name to use. If the product is new, promote a simple common name alongside the brand so consumers are not forced to use your trademark as the category name.
- Mark the brand consistently. Use ® once the mark is registered and ™ or ℠ before then, and set the mark apart with capitals or distinctive styling. Our guide to trademark symbols covers the rules.
- Adopt and enforce usage guidelines. Apply them to marketing teams, agencies, licensees, distributors, and resellers, and make compliance a contract term.
- Police third-party use. Monitor the marketplace, media, and online listings, and send polite correction requests when the mark is used generically. Keep records of these efforts.
- Track public perception. Watch dictionary entries and industry usage, and consider periodic surveys for marks that dominate their category.
Policing generic use fits naturally within a broader program for protecting trademarks from infringement.
Frequently Asked Questions
What is genericide?
Genericide is the loss of trademark rights that occurs when a brand name becomes the common name for a type of product or service. When the primary significance of the term to the relevant public is the product category rather than a single source, the term is generic, and a federal registration can be cancelled at any time under 15 U.S.C. § 1064(3).
What is a genericized trademark?
A genericized trademark is a term that once identified one company’s product but came to be understood by the public as the ordinary name for that kind of product. Court decisions reaching that result include “aspirin,” as understood by ordinary consumers of the drug (1921), and “thermos” for vacuum-insulated bottles (1963).
Can a generic term be registered as a trademark?
No. A generic term names a class of goods or services, so it cannot identify a single source and cannot be owned exclusively. The Supreme Court’s 2020 Booking.com decision clarified that adding “.com” to a generic word does not automatically make the combination generic; the answer depends on how consumers actually perceive the term.
Does using a brand name as a verb make it generic?
Not automatically. In Elliott v. Google (9th Cir. 2017), the court held that using “google” as a verb did not by itself make the mark generic. The question is whether the primary significance of the term to the relevant public is a generic name for a particular type of product or service, such as internet search engines.
How can a company prevent its trademark from becoming generic?
Use the mark as an adjective followed by the product’s common name, give consumers a generic term to use, apply the ® or ™ symbol consistently, and require licensees and partners to follow usage guidelines. Monitor how media and competitors use the mark, send correction requests when it is used generically, and keep records of those efforts.
Protect Your Brand Before It Becomes a Household Word
A brand that becomes part of everyday language is a marketing success and a legal risk at the same time. The sooner a company builds usage guidelines, monitoring, and evidence of how the public perceives its mark, the easier it is to defend that mark against a genericness challenge.
If you are concerned that your trademark is drifting toward generic use, or you believe a competitor’s registration covers a generic term, the trademark attorneys at Revision Legal can help you evaluate the risk and plan next steps. Contact us through the form on this page or call (855) 473-8474. For brand owners in Northern Michigan, a trademark attorney in Traverse City is available through our local office.
