Generic Trademark: All You Need To Know

Generic Trademark: All You Need To Know

Protecting your intellectual property as an individual, business or organisation should be top priority as your marks are immediately associated with your goods or services.

Ease of recognition by consumers is a positive step to growing your brand – but what if the success of your brand transforms your mark into a commonly used word in the public domain?

Standout examples such as KLEENEX, GOOGLE and most recently, ZOOM, demonstrate how quickly a brand or its mark can transform into a commonly used verb that refers not solely to the brand but an action. 

This process is known as genericide, whereby a trademark loses its distinctiveness after its registration to become a generic trademark.

What is a Generic Trademark?

A generic trademark is a trademark that has become a common term for a type of good or service. The mark is used by both consumers and third parties to refer to the good or service, regardless of its provider. Genericide occurs when the previously distinctive, but now generic mark no longer has the ability to allow consumers to identify goods or services as originating from the brand in question. 

When a mark falls into the public domain, the owner of the mark itself loses his or her exclusive right to exploit the mark, despite initial successful registration. The owner will face great difficulty should they wish to oppose third parties who infringe upon their marks, for example, should a competitor employ the mark as a generic or descriptive term to describe their goods or services. As the mark no longer has the power to distinguish between the goods and services of two competitors in the same course of trade, the mark itself can no longer act as a trademark as it has lost its ability to function as one. 

How Do I Prevent A Trademark From Becoming Generic? 

Taking precaution prior to commercialisation of your goods or service is the most important step to prevent your mark becoming generic. You can actively protect your mark from genericide by: 

Proper use of the ® symbol or ™ symbol.

Should your trademark be registered, it is in your best interest to use the ® symbol next to your mark to inform third parties that your mark belongs to you as your intellectual property right. It also signals to competitors that you are serious about protecting your mark and will take action against those who attempt to infringe upon it. Should your trademark be unregistered or in the process of registration, you should use the ™ symbol in place of the ® symbol. Proper trademark symbols use works to discourage the public and competitors from using your mark as a common term. 

Use the noun of the product after the trademark itself.

Sports brand Garmin is an example whereby the mark itself is interchangeable as reference to the product itself and also a noun. One would say ‘a Garmin’ in referring to two aspects: the sports watch and the brand itself. In comparison to tech brand Apple’s own line of watches, commonly referred to as ‘Apple Watch’, Garmin is significantly at a higher risk of genericide as ‘Garmin’ can be used as a noun but ‘Apple’ is less commonly used as so. ‘Apple Watch’ is a good example of protecting your mark from becoming generic, whereby placing a noun after the mark creates a distinction between your brand and the good or service you are providing on the market. 

Use your trademark properly – all the time.

Proper use of your mark should include avoiding variations, mispellings, abbreviations, plural uses, word blending, humorous use, and as previously mentioned, the use of your mark as a verb or noun. There are many ways to enforce proper use of your mark, not only within the company but also in the marketplace. This can be done by showing consumers the correct use of your mark via advertising or marketing campaigns. You should also prepare a written guideline to be distributed to third parties should they require information regarding your mark. These are efforts you should take to educate the public the ways in which you would like your mark to be used. 

Other important aspects to managing your trademark portfolio, such as paying attention to new brands or companies in your market, misuse of your mark by digital and media outlets and monitoring public perception of your mark are paramount aspects to protecting your mark from becoming generic. 

Preventing your trademark from becoming generic can be a precarious process as a mark may become generic even when used in good faith. Therefore businesses ought to be disciplined in using their mark properly – by people within the business itself and also by third parties. 

Stay proactive in protecting your trademark from becoming generic. Don’t know where to start? Quality Oracle Group have 28 years of professional Intellectual Property experience in trademark protection, registration and portfolio management. Let us help you take the next important step today. 

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