Genericized Trademark is also known as a generic trade mark, generic descriptor or proprietary eponym. Genericized Trademark is a trademark or brand name which is often used as the colloquial description for a particular type of product or service as a result of widespread popular or cultural usage.
Where a genericized trademark becomes or replaces the common term for a product or service, the mark has become generic. Escalator and Thomas Edison's mimeograph are classic examples. A trademark can also get genericized when the products or services with which it is associated have acquired substantial market dominance or mind share.
Even when a mark is popularly identified as genericized, the owner of the mark may still be able to enforce the proprietary rights which accrues to the registered 'genericized trademark,' if the mark continues to exclusively identify the owner as the commercial origin of the applicable products or services. If the mark does not perform this essential function and it is no longer possible to legally enforce rights in relation to the mark, the mark may have become generic.
A trademark becomes generic when it does not exclusively identify the owner as the commercial origin of the applicable products or services and is no longer possible to legally enforce rights in relation to the mark. A generic mark forms part of the public domain and can be commercially exploited by anyone.
Genericide of a trademark
The process by which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time where a mark is not used as a trademark (ie. where it is not used to exclusively identify the products or services of a particular business); where a mark falls into disuse entirely; or where the trademark owner does not enforce its rights through actions for passing off or infringement.
For example, one risk factor which may lead to genericide is the use of a trademark as a verb, noun, plural or possessive, unless the mark itself is possessive or plural (eg. "Friendly's" restaurants).
Trademark owners may believe that a certain level of
genericity demonstrates the success a mark. But, generic use of a trademark presents an
inherent risk to the effective enforcement of trademark rights and may ultimately lead to
Trademark owners may take various steps to reduce the risk of genericide, including educating businesses and consumers on appropriate trademark use, avoiding use of their marks in a generic manner, and systematically and effectively enforcing their trademark rights. If a trademark is associated with a new invention, the trademark owner may also consider developing a generic term for the product to be used in descriptive contexts, in order to avoid inappropriate use of the "house" mark.
When Xerox trademark was being used generically, the company took proactive measures in order to retain exclusive rights to the Xerox trademark. Xerox company was able to prevent the genericide of its core trademark through an extensive marketing campaign in the US, advising consumers to "photocopy" instead of "Xeroxing" documents. But it failed to prevent the genericide in India where research students are given "Xeroxing Allowance".
The European Union has actively sought to restrict the use of geographical indications by third parties outside the EU. Although a geographical indication for specialty food or drink may be generic, a geographical indication is not a trademark because it does not serve to exclusively identify a specific commercial enterprise, and therefore cannot constitute a genericized trademark.
The extension of protection for geographical indications is somewhat controversial because a geographical indication may have been registered as a trademark elsewhere. For example, if Parma Ham were part of a trademark registered in Canada by a Canadian manufacturer, ham manufacturers actually located in Parma, Italy might be unable to use this name in Canada.
Other affected products include Champagne, Bordeaux and many other wine names, Roquefort, Parmesan and Feta cheese, and Scotch whisky. In the 1990s the Parma consortium successfully sued the Asda supermarket chain to prevent it using the description Parma ham on prosciutto produced in Parma but sliced outside the region.