THE GENERICIDE OF A BRAND – TRADEMARK OWNERS WHO FAIL TO ENFORCE THEIR MARKS COULD SEE THEIR RIGHTS “BANDERSNATCHED”

Genericide is the act or process whereby a trademark term becomes so commonplace for the goods or services associated with it that the owner’s rights are diminished or lost as a result. Examples of once robust trademarks that fell victim to genericide include ASPIRIN (originally a trademark of Bayer declared generic in the U.S.), ESCALATOR (originally trademarked by Otis Elevator Company), THERMOS (declared generic in the U.S. in 1963) and LINOLEUM (declared generic following a lawsuit for trademark infringement in 1878). Genericide can be devastating to a brand that a company has spent significant time and money to develop.

One way to avoid genericide of a trademark is to timely obect to other’s generic misuse of the mark. Generally, this is done through the sending of cease and desist letters, and, sometimes through litigation to enjoin such misuse. Last month, Netflix released a new interactive narrative program entitled “Black Mirror: Bandersnatch” where the viewer makes decisions for the main character. In Bandersnatch, the decisions the viewer makes range from the mundane, such as whether to listen to Thompson Twins or Now 2, to more difficult decisions, such as whether to chop up a body or bury it. Bandersnatch is set in 1984 and revolves around a young video game programmer’s development of a video game based on the interactive narrative book “Bandersnatch” that lets the user make choices that affect the outcome of the game (much like the show itself).
In one early scene in the show, the main character refers to the Bandersnatch book as a “choose your own adventure book.” Chooseco, a small publishing company based in Vermont, is the owner of several U.S. Trademark registrations for CHOOSE YOUR OWN ADVENTURE which relate to it’s interactive narrative series of books for young adults. Last month, Chooseco filed suit against Netflix seeking $25 million dollars in damage for unauthorized use and disparagement of its registered trademarks. Chooseco effectively had no choice (no pun intended) but to take action against Netflix. If it would have ignored the alleged misuse, their mark would almost certainly be sliding down that slippery slope toward genericide. However, as Bayer AG discovered in 1922, bringing suit carries risks as well. Netflix will almost certainly raise the defense of genericism to the alleged infringement. So, ultimately, the court may decree the mark to be generic despite Chooseco’s attempts to avoid genericide by filing the action in the first place.

So, other than objecting to the misuse of the mark by others, how does the owner of a trademark or service mark prevent their mark from becoming generic? Wherever possible, the mark owner should give proper notice that the mark is registered. This is typically done through use of the ® symbol for marks registered with the U.S. Trademark Office or ™️ for marks protected by common law. The mark owner should never use, nor permit others to use, the mark as a noun (Kleenex instead of KLEENEX tissue) or verb (i.e. “Google it” instead of perform an internet search using the GOOGLE search engine), and it’s always best to use the mark in connection with the generic term (i.e. BAND-AID adhesive bandages). The mark should also always be displayed in all capital letters or a distinctive font which differentiates it from the surrounding text. In addition, unless the mark is already in the plural form, it should never be made plural (i.e. not two Cokes, but two COKE beverages). Lastly, if the mark is in danger of falling prey to genericide, the owner may want to educate the public as to their rights and the proper usage. One such clever campaign conducted by Xerox advised consumers that “you can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox®️ copier.”

While it’s a great thing for a mark to be well known and widely used, don’t let your mark get so well known and widely used that it becomes the generic or common name for a particular product or service. If you follow these guidelines from the start, it is unlikely that your mark will fall victim to genericide.

We are always here ready to help you acquire, protect and enforce your trademark rights. If you need to register a brand name, or if your brand is in danger of becoming generic, contact us to find out how to best protect your valuable asset.