A company might come up with a brilliant marketing strategy that successfully advertises a product to the forefront of its sector, but if its trade mark becomes so colloquial that it starts to mean the entire product category, it can reduce the trade mark to being worthless.
History is littered with moments when companies and inventors, unwise to the dangers, began to have trouble controlling their trade marks Hoover is one of the most obvious examples, but marks such as zipper and yo-yo lost their status completely decades ago, and it’s continuing to happen, netbook and pilates being two more recent examples.
The problem stems from the subtle ways in which language develops. It’s instinctive for us to pluralise product names in everyday conversation (Oreos, Jet Skis) or turn them into verbs (to photoshop, to tarmac). But by doing so we begin to erode the trade mark. Companies can, from the outset, encourage us to use an alternative generic name.
Alongside savvy marketing and awareness of the pitfalls of genericide stands a formidable legal machine of the kind that admonished Weingarten.
Kilburn & Strode who acted for Rollerblade sent hundreds of letters to anyone using the trade mark Rollerblade or the term rollerblading in an attempt to reclaim its clientÂs trade mark from the brinks of genericide.
One of the most regularly used verbs in the 21st century that shouldn’t be used as a verb at all is “to google”. When we refer to “googling” for products and services, we generally mean visiting google.com and typing in a query Â but it could equally mean searching the internet by other means, too. There was a point where Larry Page and Sergey Brin, Google’s founders, would have embraced the idea of their brand into a verb indeed, the first reference found to “googling” occurs within something posted online by Page himself on 8 July 1998. And, as Nigel Jennings notes, that kind of excitement is understandable.
Examples of Generic Trade Marks
Following a trade mark application by a Mr Charles Seeberger in 1900, competitors of Otis, manufacturers of the Escalator, were forced to refer to their products as motorstairs or electric stairways. But everything changed in 1950 with the court case of Haughton Elevator Co v Seeberger. The judge ruled the term had become generic, mainly through Otis’s negligence the company had used the word “escalator” alongside the generic term “elevator” in advertising and, crucially, hadn’t capitalised the word “Escalator” correctly in the original trade mark application, using “ESCALATOR” instead.
A century ago, German pharmaceutical company Bayer achieved success with their trade marked “Heroin” and “Aspirin” drugs. Heroin’s “non-habit forming” properties saw it become a popular cure for respiratory ailments, while Bayer’s deliberately awkward generic name for Aspirin (monoacetic acid ester of salicylic acid) saw the brand name slip into common parlance. But during the Spanish flu epidemic hundreds of varieties of aspirin hit the shelves, and Bayer’s efforts to protect the trade mark failed. At the end of the war, the Treaty of Versailles revoked the trade marks for both aspirin and heroin in France, Russia, the UK and US.