Best Practices to Avoid Genericide

As part of their work in the 2018‒2019 committee term, the Famous and Well-Known Marks-U.S. Subcommittee has conducted research on how trademarks become generic and how to prevent them from doing so. This guideline provides brand owners with best practices to avoid losing protectable trademark rights to genericide.

What happens when a company’s latest “hot” trademark catches on like wildfire? As brand owners and trademark practitioners, we know that registered trademarks can become generic through misuse. Some examples of misuse may involve a competitor or consumer using your trademark to refer to the competing product/service, or perhaps even a representative of your own brand using your trademark as a common descriptor for a type of product/service. Brand owners and consumers very often misuse trademarks without even realizing that they may be subjecting such marks to genericide.

How do you keep your beloved new mark from unintentionally falling victim to genericide and losing its protectable rights? The Famous and Well-Known Marks Committee’s U.S. Subcommittee recommends the following 10 best practices:

1. Develop an internal “Best Practices to Avoid Genericide of ______” while the brand is still in development.
   • Before launching a coined mark, prepare a generic term that is a noun to use with the coined mark that is to be used as the brand.
     • If an existing generic term is complicated or difficult for people to understand, find or create a simpler one.
     • If the product is new and there is no existing generic term, create one.
   • Use the brand as an adjective with the generic term: [TRADEMARK] [insert generic term].
     • Examples: ROLLERBLADE in-line skates. PING PONG table tennis.
   • In a pinch, use a general description: [TRADEMARK] brand.
2. Prepare a standard, written explanation for correct usage of your mark that can easily be distributed to third parties, such as licensees or general consumers, when incorrect usage is found.
   • Keep the tone upbeat and positive but be firm and clear about what the correct usage is.
   • Consider adding similar language in any trademark/branding usage guidelines that are incorporated into agreements with third parties.
3. Hire an experienced search vendor to monitor print and online publications and the Internet to identify improper uses of your mark.
   • The vendor should also make you aware of the goods/services descriptions for new filings with the trademark office.
   • Be careful about words that are often considered descriptors but which are actually registered marks.
4. Consider using the ® registration symbol (or the TM/SM symbol for unregistered trademarks).
   • Distinguish the trademark from surrounding text by capitalizing the entire name, using a distinctive typeface or, at the very least, capitalizing the first letter.
   • Always use your own mark correctly, even internally. Disgruntled ex-employees might leak embarrassing documents that could be costly during litigation.
5. Use good judgment when approving quirky advertising and promotional materials; such uses may inadvertently dilute your own mark by confusing the public about correct usage.
6. However, sometimes clever advertising can be used to educate the public about proper usage.
   • The classic example is XEROX. The Xerox Corporation conducted a widespread ad campaign to urge consumers to use the verb “photocopy” rather than the now popularized shorthand “xerox.” They were successful and prevented genericide of their trademark.
   • Velcro BVBA published a video to educate consumers on the correct use of the VELCRO trademark and the generic names of the tape or fastener (for example, “hook-and-loop”).
7. Don’t forget to educate individuals within your organization and/or supply chain, such as distributors and dealers.
   • Misuse often occurs due to lack of education, not wrongful intent.
   • For instance, consider creating a public relations campaign (television, radio, etc.) to demonstrate correct and incorrect uses.
8. Keep detailed marketing records so that you can prove “acquired distinctiveness” if necessary.
   • Consider retaining records showing your advertising costs, revenue figures, and unsolicited press mentions.
9. Consider creating a new product category if your trademark is at risk of being considered a generic term for a particular type of product and tout the fact that the mark is a brand for a line of products.
10. If brand owners are sufficiently diligent, those efforts may be recognized by the courts.
    • For example, Google prefers that consumers do not use the phrase “Google it” to refer to performing an Internet search. However, in 2014, an Arizona court decided that “Verb use of a trademark is not fundamentally incapable of identifying a producer or denoting source. A mark can be used as a verb in a discriminate sense so as to refer to an activity with a particular product or service….” In May 2017, the Court of Appeals for the Ninth Circuit agreed.

For further information, see:

• Funeral for a Brand: How Trademarks Become Generic via the INTA website; and
• “Practical Tips on Avoiding Genericide” by Gary H. Fechter and Elina Slavin, INTA Bulletin (2011).

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association