Trademark generalisation occurs when the trademark becomes common and losses the uniqueness. In order to analyse it one needs to look a variety of factors that affects a trademark.
The primary factor that influences a trademark generalisation is the public perception on it. If the public at large see the trademark as something that is usual and has no uniqueness then the trademark would lose its value. So to analyse it you have figure how the trademark loses its uniqueness in the eyes of the public. Even courts have not been able to lay down tests that could determine this public perception.
One could then move on to analysing whether the trademark has lost its secondary meaning in the market. Sometimes trademarks are granted for certain generic terms if the USPTO finds that the public relates the trademark to a secondary meaning. This secondary meanings sets the mark apart and makes it unique. But the secondary meaning could also lose its uniqueness which could make the secondary meaning generic as well.
If the trademark is deemed to be generic then one needs to analyze the likelihood of confusion posed by it. Trademarks are often granted with a primary goal of ensuring that the public associate goods with their original manufacturers. In fact, one the main goals of the trademarks act is to help with public’s perception about good. If a mark is cancelled on the grounds of generalisation, then the general public’s ability of associating products to a particular mark could be hampered. A generic trademark once cancelled could be used by a number of manufacturers. These manufacturers could also use names that are similar to cancelled mark.
A public opinion survey wherein the public are asked some crucial questions surrounding the trademark in question can be also be done. This public opinion survey can help to properly analyze the extent of generalisation of the mark in the market.
See How do we find possible genericides? here on genericides.org.
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Such factors should include:
- availability of alternative terms;
- likelihood of confusion;
- public opinion surveys;
- secondary meaning;
- advertising and sales; and
- manner and length of use.
These factors have all been used at different times in cancellation or trademark infringement cases and should be considered as a group whenever a trademark is challenged as generic.
Each of the factors discussed in Part II can be valuable in determining the validity of a trademark. Cancellation, however, should not be based on a random analysis of miscellaneous factors, but rather should be based on the weight of the evidence presented by a coherent group of factors, applied in a consistent manner.
The Availability of Alternative Terms
A primary consideration in cancellation proceedings is whether there are terms, other than the contested mark, that can be used to accurately describe the relevant goods. This factor should be given considerable weight in determining whether a term is generic because the doctrine of genericness is based on the concept that manufacturers and consumers should be able to describe goods that are similar or identical to the trademarked goods. If the public knows the product by only one description, no individual will be granted the exclusive use of that name
Voorbeelden: Aspirine, Trampoline, etc
Granting exclusive use of a term that is the only publicly recognizable name for a category of goods unfairly limits competition because it confers a monopoly on the trademark owner by rendering competitors unable to describe their goods effectively. Competitors are hampered in the sale of their goods, and consumers cannot easily discover whether products similar to the trademarked goods are available from other sources. If adequate synonyms are available, how-
ever, permitting a trademark owner to retain exclusive rights in a mark does not handicap competitors or consumers.
Widespread use of alternative terms may prove that competitors do not need the contested mark to describe their goods. Moreover, trademark protection may be afforded to the contested mark even though existing synonyms are not generally used
Along the same lines, consideration should be given to whether use of the contested trademark is necessary to describe certain goods or whether a challenging party simply hopes to reap the benefits of the owner's advertising and goodwill. Whether a competitor is "riding the coattails" of the trademark owner is frequently a factor in trademark infringement cases.
Likelihood of Confusion
A major objective of the Act is to prevent public confusion concerning the origin of goods. Congress intended to regulate the use of trademarks in such a manner that consumers could be confident that when purchasing a trademarked product they would in fact get the goods they intended to receive.
In determining whether a mark should be deemed generic, an evaluation should be made as to whether cancellation would result in confusion concerning the origin of goods bearing the contested mark. One court noted that cancel-
lation should be granted only "[i]f the mark has come to be so public and in such universal use that nobody can be deceived by the use of it, and.. . [therefore induced] to believe that he is buying the goods of the original trader.
In other words, cancellation should not be granted if confusion is likely to result from an appreciable number of buyers associating the contested mark with a single source and, after cancellation, being unaware that the cancelled mark may be used by other manufacturers.
In trademark infringement cases, courts will act to prevent confusion when "there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled or indeed simply confused, as to the source of the goods in question."
Public Opinion Surveys
No generally accepted formula for determining public perception by means of a survey has been established by the courts, even though survey evidence is often employed in cases concerning public perception.
==>dus noodzaak voor neutrale speler
One expert in the field of public opinion surveys has asserted that different responses may be elicited simply by rearranging certain questions in the survey. Another polling expert has commented that if five surveys were conducted, there would be five different results.
To become generic the principle significance of the word must be its indication of the nature or class of an article, rather than an indication of its origin.
That consumers request a product by the name given to the goods by the manufacturer does not negate the mark's source-denoting function. "When a person informs us that he has bought a Ford, he need not add that it was an automobile. And when he buys a Stetson, we know that he is buying a hat."
In Anti-Monopoly, another survey-the "brand name" survey- was conducted in which consumers were asked to classify various words as either a common name for an item (the word "car" was given as an example of a common name) or as a brand name (e.g. "Chevrolet"). (..) The "brand name" survey appears to present the most reliable evidence concerning public perception because it addresses the essential question of a term's primary significance and the public's understanding of it.
Another factor to be examined in a cancellation proceeding is whether the challenged mark has acquired and retained a secondary meaning. If the public associates the relevant trademarked goods with a single source, the mark is said to have acquired a secondary meaning.
Advertisement and sale
In cancellation proceedings, courts should also consider the amount of time, money and energy expended by the trademark owner in promoting his trademark, together with the volume of sales generated.
+However, this is an indirect conclusion, the fact that a trademark owner's investment in a mark does not of itself create protectable rights.
Manner and Length of Use
By using a generic term in conjunction with the use of the trademark to describe the product, the owner may provide the public and other manufacturers with an alternative method of describing the product and thereby prevent public misuse.
A two-part inquiry is used to determine whether a designation is generic:
- (1) What is the genus of goods or services at issue?
- (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services?
Because federally registered trademarks enjoy a strong presumption that they are not generic, a defendant must offer actual evidence that a trademark owner’s marks were “used or understood by consumers as a generic term rather than a brand name.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 604, 606 (9th Cir. 2005). This could be done by presenting the following: “
(1) generic use by competitors of the mark that has not been contested by the owner of the mark;
(2) generic use of the trademark by the proponent of the trademark;
(3) dictionary definitions to determine public usage;
(4) generic usage in the media of the trademark, such as in trade journals and newspapers;
(5) testimony of persons in the trade; and
(6) consumer surveys.”