Did You Know...There's a Trademark Graveyard?October 16, 2009
Cellophane. Escalator. Zipper. Once they were trademarks; now they're not.
What happened? Each mark became so popular that people began using it as the generic name for the product it branded – cellulose sheets, powered stairs and sliding fasteners, respectively – and eventually the mark became the name for that product. In other words, the mark died and was buried in the "trademark graveyard."
That graveyard actually exists – it’s called a dictionary, which is where a former mark may officially appear as a generic name. In fact, Merriam-Webster’s Collegiate Dictionary (10th ed.) gives the derivation of the word zipper as "Zipper, a trademark." That dictionary also shows that "thermos," long generic in the United States for vacuum-insulated containers, was originally a trademark.
However, because trademark rights vary country by country, THERMOS still receives protection as a trademark in some jurisdictions – the United Kingdom, for example. Likewise, Canada still regards YO-YO as a trademark for a brand of the popular spinner-on-a-string, even though over 40 years ago a U.S. court declared the term generic for such toys.
Trademark owners sometimes put their marks on a "health maintenance program" by running advertisements to remind the public that their marks are not generic names and should not be used that way. Xerox Corporation’s "anti-genericide" ads are perhaps the best known. One states, "When you use ‘Xerox’ the way you use ‘aspirin’, we get a headache." That ad humorously makes the point that the company doesn’t want XEROX to become generic for photocopiers the way ASPIRIN became generic for a pain reliever (at least in the United States; ASPIRIN is still a mark in many places).
Anti-genericide ads appear most frequently in publications aimed at writers and editors – Writer’s Digest and Editor & Publisher, for instance. That way trademark owners have the best chance of keeping generic uses of their marks out of print, thereby avoiding the quickest route to the trademark graveyard.
Another way to keep marks from entering the graveyard is to ensure that there is a generic name for the branded goods or services in question, even if the name has to be invented by the trademark owner (which could well be the case with a unique new product). Examples include "correction fluid" for liquid WITE-OUT products and "inline skates" for ROLLERBLADE products. In fact, the Wikipedia entry for ROLLERBLADE carefully notes that "Rollerblade is a type of inline skate" and that the term is a "registered trademark."
Yet another technique for avoiding the graveyard is consistently using the word "brand" between the mark and the generic name – for example, KLEENEX brand tissues and BAND-AID brand bandages. Several of Johnson & Johnson’s U.S. registrations for its various BAND-AID trademarks include the word "brand" as part of the mark.
But even a careful owner may not be able to avoid its mark being killed by genericide in certain places. Although Xerox Corporation has kept XEROX from becoming synonymous with "photocopy" in most of the world, the mark has reportedly become generic in the Bulgarian, Portuguese, Romanian and Russian languages.
Google Inc. seems determined not to let GOOGLE enter the graveyard even though the mark is often used, at least informally, as the generic term for conducting an Internet search. In 2006, Merriam-Webster began defining "Google" as a verb meaning "to use the Google search engine to obtain information about (as a person) on the World Wide Web," and the Oxford English Dictionary also includes the verb, although capitalized.
Perhaps recognizing that limited use of a mark as a generic name helps to show the mark’s popularity, Google has indicated that it does not necessarily object to "Google" being used to name searches run with Google’s proprietary engine. If use of GOOGLE is restricted in that way, the mark likely will remain a mark, and a strong one at that.
For example, in the 1970s and 1980s, the owner of the LEGO mark conducted a campaign to persuade customers to call its products "LEGO blocks" or "LEGO toys." Although they continued to call LEGO brand products "legos," customers did not call competing products by that name, so the LEGO mark has remained alive and well – and out of the trademark graveyard.
Ironically, the most popular marks face the greatest threat of entering the trademark graveyard. So, as is the case when goods with a desirable brand are counterfeited, having a genericide problem is, in one sense, a sign of success. Who knew the prospect of burying a mark would have a bright side?
Sources: http://en.wikipedia.org/wiki/Genericized_trademark; http://blogs.techrepublic.com.com/geekend/?p=1293&page=2; http://news.cnet.com/Google-joins-Xerox-as-a-verb/2100-1025_3-6091289.html;
* As appeared in INTA Bulletin
Tim is a member of the firm and practices in its Corporate, Securities and Finance Section, where he heads the Intellectual Property (“IP”) Group. Tim concentrates his practice on trademark and copyright counseling, registration and enforcement, software and technology licensing, e-commerce and other web-related agreements, trade secret protection and IP litigation, arbitration and mediation.