According to the Oxford Dictionary, trademark generalisation or genericide means, “the process by which a brand name loses its distinctive identity as a result of being used to refer to any product or service of its kind.” The primary function of trademark is to distinguish a product and signify its uniqueness to consumers. This primary function of being distinguishable from its competition and signifying its uniqueness to consumers is lost when the trademark suffers generalisation.
When a trademarked name or word becomes to be primarily understood by the consumers as the generic name of the product or the name referring to the product category, then it can be said that the trademark has suffered generalisation.
When trademark generalisation occurs, the trademark loses its significance and also loses the monopoly it creates for a particular product, product category or brand. The primary function of trademark is to distinguish a product and signify its uniqueness to consumers. This primary function is lost when the trademark suffers generalisation.
It is very difficult to prove the public perception of a trademark with a single evidentiary factor. See How to analyse trademark generalisation? Furthermore, the courts have failed to define factors which can be uniformly applied to examine if a trademark has suffered generalisation or not. Thus making trademark law to be inconsistent when it comes to cases dealing with trademark generalisation.
Legislation in different juridictions
Under the US federal law, the registered name or word is subject to cancellation at any point of time it becomes the common name for referring to or describing a product. Therefore, that word or name can not be trademarked anymore as it lose its uniqueness to generalisation.
In the United Kingdom, a new amendment to the UK Trade Marks Act, 1994 and their Trade Mark Rules, 2008 came into effect on 14 January 2019. According to this amendment, court action to be brought by a trade mark owner where in a dictionary, or similar publication, a publisher refuses to amend reference to a registered trade mark as a generic term, and where such reference is incorrect. With this amendment, a trademark owner can protect its trademark from being genericised.
In Australia, under the Trademarks Act, 1995, a registered trademark owner ceases to have exclusive right over it the day it is determined by court to have suffered generalisation. This act defines genericide as a sign that has become generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.
[Ingram, p1] [Jacqueline Stern p10] [Folsom p1]
The federal registration of a word is subject to cancellation if at any time it "becomes the common descriptive name of an article or substance.
The degree of distinctiveness exhibited by a trademark affects both its eligibility for registration and its enforceability.
Distinctiveness in the United States is generally classified into four categories according to the "Abercrombie framework".
Marks that are either fanciful (invented terms such as EXXON, TYLENOL and PRIUS) or arbitrary (common words applied in an unfamiliar manner, such as PUMA used for sporting gear) are the strongest and are viewed as inherently distinctive.
Marks that are suggestive (words that require “imagination, thought and perception to reach a conclusion as to the nature of goods”, such as “Microsoft” for computer software), are also distinctive. However, words that are merely descriptive of the goods or services that they name, such as “App Store” for an online platform for distributing software applications, may not be registered without an additional showing of secondary meaning (i.e., that the mark has come to identify the source of the goods or services in the public eye).
And, finally, terms that are generic, connoting a general category to which a particular product belongs (e.g., car, savings bank, lawnmower) but which give no specific indication of the product’s source, are viewed as not being distinctive and receive no trademark protection whatsoever.
Though these rules may, at first glance, appear straightforward, the determination whether a particular term is generic or descriptive can be complex.
As the Federal Circuit has explained,
A generic mark, being the ultimate in descriptiveness, cannot acquire distinctiveness. This is so because generic terms are by definition incapable of indicating source, and therefore are the antithesis of trademarks, and can never attain trademark status.
A common test applied by the courts to determine whether a mark is generic is whether the “primary significance of the registered mark to the relevant public is as the name for a particular type of good or service irrespective of its source.” As further explained by the Third Circuit in E.T. Browne Drug Co. v. Cococare Products, Inc.,
[T]he primary significance test … inquires whether the primary significance of a term in the minds of the consuming public is the product or the producer. We ask whether consumers think the term represents the generic name of the product [or service] or a mark indicating merely one source of that product [or service]. If the term refers to the product (i.e., the genus), the term is generic. If, on the other hand, it refers to one source or producer of that product, the term is not generic (i.e., it is descriptive, suggestive, or arbitrary or fanciful). To give an example, “Cola” is generic because it refers to a product, whereas “Pepsi Cola” is not generic because it refers to the producer.
Or, put more simply by the Ninth Circuit in Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc.,
A distinctive mark answers the questions ‘Who are you?’ ‘Where do you come from?’ ‘Who vouches for you?’ But the [generic] name of the product answers the question ‘What are you?’”.
In addition, for a mark to be deemed generic, it must relate to the particular type of good or service for which the mark is registered. That is, even if a term has a generic meaning in some contexts, it may not be generic as to the particular good or service for which it acts as a mark. As noted by the Ninth Circuit in Google, this requirement is necessary “to maintain the viability of arbitrary marks as a protectable trademark category”. That is, “[i]f there type of good, then a mark like IVORY, which is arbitrary as applied to soap, could be cancelled outright because it is generic when used to describe a product made from the tusks of elephants.”
As a result, much depends on how an adjudicatory body interprets the relevant product or service genus to which the term is applied.
In Google, the Ninth Circuit upheld the lower court’s ruling that the term GOOGLE was not generic. It reasoned that even if a majority of the public uses the verb “google” indiscriminately to refer to Internet searching, this does not mean that GOOGLE has become a generic term for Internet search engines.
In In re Cordua Rests., Inc., the Federal Circuit further complicated the analysis by holding that “a term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus.” For example, “the term ‘pizzeria’ would be generic for restaurant services, even though the public does not understand the term to refer to the broad class of restaurants as a whole; the public need only understand that the term refers to ‘a particular sub-group or type of restaurant rather than to all restaurants.’”
Thus, in Royal Crown v. The Coca Cola Co., the Trademark Trial and Appeal Board (TTAB) upheld The Coca Cola Company’s registration of the mark ZERO to describe its line of no-calorie soft drinks. Royal Crown (RC) opposed the mark, arguing, among other things, that the term ZERO was generic. In analyzing RC’s genericism challenge, the TTAB defined the relevant genus as “soft drinks, sports drinks, and energy drinks.” The Federal Circuit reversed and remanded, holding that “The [TTAB] failed to consider whether the relevant consuming public would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages—i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.”
But even if certain terms are found to be generic, they may still form part of otherwise distinctive marks. For example, the mark DYNAMITE for a take-out TexMex restaurant chain is likely arbitrary under the Abercrombie framework (given the lack of any actual connection between explosives and TexMex food). Yet the term BURRITO for a TexMex restaurant is almost certainly generic. Thus, to avoid any implication that the owner of the DYNAMITE BURRITO restaurant chain could claim rights in the word burrito itself, the PTO generally requires that generic terms included within registered marks be disclaimed as to standalone uses. Thus, the owner of DYNAMITE BURRITO would likely have an infringement claim against its competitor Dynamite Tacos, but not against Chihuahua Burrito.