Xerox, aspirin, thermos, and hoover were all once trademarks that lost their protected status because their names became generic, what we call Trademark Genericide. Most recently, Google’s trademark status was challenged unsuccessfully as reported here. By enforcing trademark rights we help protect your trademark.

The US Court of Appeals ruled this month that Google still retains its trademark even though “google” has become synonymous with searching the internet. While “google” has become a verb for many, Google is a whole lot more. The court also noted that trademark genericide occurs when the name has become an “exclusive descriptor” that makes it difficult for competitors to compete unless they use that name.

What is a Trademark?

A trademark is a name of a product or service that is used in commerce so that customers can identify the source of the good or service. There are several categories of trademarks. The most successful trademarks are often suggestive (e.g., MicroSoft for software for microcomputers), arbitrary or fanciful (e.g., Apple for laptops and computers), as the distinctiveness of the trademark sticks in the memory of the consumer.

Trademarks can also be considered descriptive, or generic, but these marks are often not legally protectable under trademark law.  

Can a Protected Trademark Become Generic?

When a registered trademark owner fails to police and enforce the unauthorized use of their trademark, the trademark owner risks losing the mark through a form of abandonment known as genericide. Genericide is when a protected mark becomes a generic term for the item it is associated with over time. A trademark suffers genericide when the trademark or tradename becomes so commonly used by the general public that the trademark becomes synonymous with the product, and if the entity that owns the trademark does not fight to keep the trademark protected, the trademark or tradename can become a generic term, i.e., it can lose its legally protectable distinctness.

Genericide is when a protected mark becomes a generic term for the item it is associated with over time.

Genericide has happened to many unfortunate trademarks in the past. Some examples of generic terms that are used commonly today that were once trademarks include:

• Xerox, commonly used to refer to photocopy.
• Aspirin, generic for acetylsalicylic acid, which is commonly used to treat headaches.
• Laundromat, for a coin operated laundry store.
• Thermos, commonly used to refer to a vacuum flask thermal insulator.
• Videotape, generic term used for the cartridge used in VCRs.

Avoiding Trademark Genericide

There are many things that a trademark owner can do to protect trademark rights from genericide. Some ways to help avoid a trademark from becoming generic include:

• Monitoring the use of the trademark.
• Enforcing trademark rights.
• Educating companies and the public about the proper use of the trademark.
• Always presenting the trademark in the proper form, i.e., always in the proper font/stylization, or all capital letters, and with the appropriate trademark symbol (e.g., ® or ™).
• Never using the trademark in a generic manner.
• Make clear to consumers that the trademark represents the brand and not the product itself.

Registered trademarks can often be the most valuable assets of your business and, unless you enforce your trademark rights consistently and regularly, you may lose those assets. Through internal education and external enforcement, your company and ensure that you protect your company’s assets and ensure that they do not become generic.

Contact a New York Trademark Attorney

Trademark genericide is a tragic way for a mark to lose its protected status. When you need assistance securing, protecting and enforcing trademark rights, you can contact the experienced trademark lawyers at Revision Legal. We can be reached today by using the form on this page or by calling us at 855-473-8474.

How Courts Determine Whether a Mark Has Become Generic

The legal test for genericide is whether the primary significance of the mark to the relevant consuming public is the product category itself rather than the source of a particular product. This “primary significance” test derives from the Supreme Court’s analysis in Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), and was later codified in Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3), which allows cancellation of a registered mark that has become the generic name for the goods or services it was registered for.

The Ninth Circuit’s ruling in Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017), addressed this test directly in the context of “google” as a verb. The court held that the relevant question is not whether some consumers use the mark as a generic term, but whether the primary significance of the term to a substantial majority of the public is as a generic designation rather than as a source identifier. The court found that even though many people use “google” as a verb meaning “to search,” the mark retains source-identifying significance for a sufficient portion of the public—because Google is far more than just a search engine.

The Role of Trademark Policing in Preventing Genericide

Brand owners bear an affirmative responsibility to prevent their marks from becoming generic. The law does not protect owners who stand by while their marks are used generically in commerce. Google’s aggressive trademark policing program—including educating journalists, publishers, and the public about proper use of the GOOGLE mark as an adjective rather than a verb—is cited by courts as evidence that the company actively works to preserve the mark’s source-identifying function.

Effective policing includes several components that every trademark owner should maintain:

Monitor commercial and editorial usage. Use trademark watching services to identify instances where third parties are using your mark as a noun or verb to describe a category of products rather than your specific brand. When a major publication uses “xerox” as a synonym for “photocopy,” the brand’s legal team should send a letter requesting correction.

Educate your own employees and marketing teams. Internal usage matters. If your own advertising uses the mark generically, courts may treat that as evidence of genericness. Ensure that all marketing materials use the mark as a proper adjective modifying a generic noun—”KLEENEX tissues,” not “a kleenex.”

Include usage guidelines in licensing agreements. Licensees must use your mark consistently with your usage guidelines. Include provisions specifying the correct form of the mark, the appropriate trademark symbols (® for registered marks, ™ for unregistered), and prohibitions against using the mark as a generic term.

Case Studies in Genericide: What Went Wrong

The history of genericide is a record of brands that failed to police their marks aggressively enough to prevent generic drift:

ASPIRIN (Bayer): Original German trademark lost in the United States as a result of World War I treaty provisions and subsequent judicial findings that the term had become generic for acetylsalicylic acid. Bayer still holds the mark in some international markets where it was successfully defended.

ESCALATOR (Otis Elevator): Lost trademark status in the United States after courts found that “escalator” had become the generic term for a moving staircase. Otis failed to enforce the mark consistently.

THERMOS (Aladdin Industries v. King-Seeley Thermos Co.): The Second Circuit found in 1963 that “thermos” had become generic for vacuum-insulated containers, holding that the mark’s owner had not done enough to educate the public that THERMOS was a brand name rather than the product category.

In each case, the common thread was insufficient enforcement combined with widespread generic usage that the mark owner failed to combat. The cost of that failure was the permanent loss of a valuable trademark.

Protecting Your Mark Going Forward

If your brand has become widely known—which is a success you want—it is also a brand at elevated risk of genericide. The more famous the mark, the more aggressively it must be policed. Contact the trademark attorneys at Revision Legal to develop a comprehensive trademark monitoring and enforcement program tailored to your brand. Reach out today.