Keeping a brand alive: the problem of genericide
When an inventor has their big idea, they dream of it becoming a household name, owning its category and seeing off all attempts at competition. As they apply to register their all-important trade mark, visions of billboard ads, TV and digital campaigns may all be swimming in their mind’s eye. As Del Boy put it: “This time next year, Rodney, we’ll be millionaires!”
Some brands will indeed become world-famous, making all their founders’ dreams come true. However, there is a point at which becoming synonymous with a type of product backfires. It doesn’t happen often, among the millions of registered trade marks in the world. But, when it does, it can severely weaken a brand’s position and ability to defend against its competitors.
The phenomenon is called genericide. It arises when consumers and the wider public cease to associate a specific company with the branded product it produces, and instead refer to all goods of that general type by the brand name. Once this happens, the trade mark fails to function as a way of identifying the source of the product. As this is the primary role of a registered trade mark, this is a serious matter. It can lead to the trade mark being cancelled by the issuing authority, meaning all the brand equity built up – often over many years – is lost.
Examples of products where the original brand name has become generic include aspirin, escalator, thermos, trampoline, linoleum and hovercraft.
As you might imagine, there are instances where a mark has become generic in some countries and not in others. Sellotape is one example; it is generic in the UK and many other geographies, but not in the US, France, Canada and Italy, where “Scotch Tape” is the primary way to refer to clear adhesive tape.
Similarly, Hoover has become generic in the UK, but not in the US, where the correct term “vacuum cleaner” is more widely used. But in the US, Kleenex is at risk of becoming generic (on which more later) whereas Brits reach for tissues, not Kleenex.
The advent of the digital era has created new challenges, not least for tech companies themselves. Google issued rules around the correct use of its trade marks in a bid to stop people using it as a verb for all internet searches – with limited success, it must be said. Similarly, the rapid rise of Zoom during the pandemic saw it commonly used to refer to all virtual meetings, prompting this commentary to refer to it as “the “BandAid” (also a genericised term that was originally a trade mark) of pandemic life”.
What can brands do about genericide?
While ubiquity may seem like a good problem for a marketing team to have, over in the legal department, the threat of genericide is a significant concern. In order to present a strong case in the event of a cancellation bid on the grounds of genericide, brand owners must show that they have taken steps to educate the public about the difference between their brand and other products in the category it operates in.
Over the years, this has led to some creative, entertaining, and sometimes just downright odd attempts by brands to – effectively – drum the concept of trade mark law into the general public. Often, the fact that it is a legal issue is taken literally, which has resulted in at least two TV ads featuring singing “lawyers” exhorting consumers to refer to the trade mark correctly.
Photocopiers, tissues, and ‘hook and loop’ get the creative treatment from trade mark holders
Xerox was founded almost 120 years ago and was pivotal in the development of the first photocopying machine. In 1948 the term “Xerox” (derived from the Greek for ‘dry writing’) was registered as a trade mark. In the following decades, the use of “Xerox” as a catch-all term for duplicating documents took off and Xerox has been defending the brand against genericide ever since. Memorable activities include this campaign asking people in influential industries such as film-making and script-writing to “use Xerox only as an adjective to identify our products and services, such as Xerox copiers, not a verb, ‘to Xerox,’ or noun, ‘Xeroxes.’”
More recently, the “lawyers of Kleenex” took to social media to thank consumers for saying “pass a Kleenex brand tissue” rather than “pass a Kleenex”. Kleenex and Xerox both aim their campaigns specifically at stopping the brand being used as a noun or verb.
Velcro had an even bigger mountain to climb. Do you even know what the generic term for Velcro is? You will after watching this heavily bleeped and implicitly sweary musical offering.
It sums up the challenge with the immortal lyrics: “You think it’s awesome for us we’re famous, but we’re lawyers and it’s causing us grief, ‘Cause there are trade mark laws being broken, it’s all here in this short legal brief.” (Spoiler alert, the brief is not short). Following the clip’s lively reception, the team went further and doubled-down on their message in a musical response to some of the comments it garnered.
These are all creative and amusing tactics used to educate the public about trade mark law and brand protection, but there is a serious side. If a brand is judged to have failed to act against the risk of genericide, it is at greater risk of having its trade mark cancelled. This can lead to what seem like heavy-handed tactics from brand owners when smaller businesses use what they believe to be generic terms for products or activities in their company name. A small fitness studio based in Bath, UK, found itself in conflict with Mad Dogg Athletics when it attempted to register “Spin Village” as the name of its indoor cycling studio. Believing “spinning” was a generic term, the business was surprised to face opposition from Mad Dogg Athletics, which holds the trade mark for the term in classes 28 (exercise equipment) and 41 (provision of exercise training and information relating to exercise training). While Spin Village contended that the term had become generic, Mad Dogg Athletics had successfully overturned an EU IPO decision to cancel the mark in 2016, with the result that the studio had to rebrand.
While it is unfortunate for Spin Village – and something that consulting a Chartered Trade Mark Attorney prior to making branding decisions could have prevented – it is understandable that Mad Dogg Athletics is keen to protect the brand.
There are other ways that brands can guard against genericide, including:
- Ensuring all marketing materials include the ® symbol, indicating the mark is registered
- Avoiding referring to its own products in verb or noun forms
- Capitalising the trade mark where feasible
- Monitoring the trade mark for infringement and act to defend it when instances are identified
- Staying up to date with developments in language e.g. the Oxford English Dictionary named Zoom one of its words of the year during the pandemic. Formal entry into a dictionary could prove bad news for a brand fighting genericide.
- Referring to the category of products alongside the trade mark e.g. Kleenex brand tissues.
The last point can be a challenge for a genuinely ground-breaking innovation that is the first of its kind. In this case inventors should consider creating a generic name for their type of invention, to run alongside its mark.
Language evolves all the time, and trends come and go. It’s possible that a mark that at one time became generic could return to the niche it started from, or even disappear altogether. But in the meantime, for brand owners, defending their trade mark must be a priority to stop it suffering the fate of genericide.