What is genericism?
If trade marks are bigger and better known, then there is a greater need for protection not only against infringement and falsification, but also against the ‘generalisation of trade marks’. There is not much talk about this concept, but there is more to this problem than is thought. The concept is important because the more distinctive and identifiable a brand is, the higher its value. If a trade mark is no longer able to fulfil its primary function of identifying commercial origin, then the trade mark becomes generic and can be used by competitors. This can devalue the brand to zero.
The legal term used for this situation is “genericide” or “genericism”, and it designates the process by which a term that began as an indication of commercial origin, but has become, through (wrong) use, so associated with the type of product that consumers no longer recognize the term as identifying the source of the product, the trademark turning into a common verb or noun.
Bayer Co. v. United Drug Co. was a landmark case in which Bayer lost its trademark for “Aspirin” due to what experts now call “genericides.” This 1921 case laid the foundation for the modern standard that courts currently follow: If the public understands that a trademark generally refers to a category of goods and services, rather than a specific brand good or service, a company may risk losing its trademark. “Escalator”, “Thermos”, “Refrigerator“, “Linoleum” and many others have lost their trademark status due to generalization.
All the cases mentioned above prove that the value of the brand decreases as the general public begins to use it in everyday speeches and, over time, there is an absolute decline in brand recognition. Eventually, the brand name becomes synonymous with the product and loses its distinctiveness, the very character that made it distinct in the first place.
The fight for the brand “XEROX”
The XEROX trademark is registered worldwide. But, unfortunately, it seems to have become a victim of his fame, since it was understood as a common verb in some parts of the world. Xerox Corporation, the company that owns the XEROX brand, has faced a long struggle to prevent its name from being declared generic.
This company manufactures the machines used for photocopying and printing materials: according to Xerox, the first xerographic copy was made in a makeshift laboratory in Astoria, Queens, on October 22, 1938. More than 70 years later, trillions of pages have been copied. In 2003, this company faced great difficulties when it realized that its brand was diminishing its value.
Xerox did its best to fight the generalization of its name, running a series of ads urging people to remember the trademark. One such ad mocked another company, mentioned above, which fell victim to the generalization: “When you use ‘xerox’ like you use ‘aspirin,’ our heads hurt,” the ad said.
“The most powerful weapon in this fight is education. We need to draw a line between those who want to infringe and counterfeit our trademark and those who simply misuse a trademark as a verb and who may not even know it is trademarked. The two sets of people are very different groups. Instead of strongly opposing those who misuse the trademark, we try to educate them.” – says Margaret Walker, general counsel on intellectual property issues at Xerox Corporation.
Walker is confident that “Xerox” won’t suffer the same fate as other brands: “When you look at the factors that courts consider when determining whether a brand has gone generic, I don’t think we’re going to face too many problems. Courts will look at how the company itself uses its trademark and whether it is used in a way that suggests it is a generic term or in a way that differentiates it.“
Conclusions
The public’s use of your brand as a verb may seem enviable at first glance – it suggests that the brand is highly recognizable to consumers – but if Xerox were to confront the dreaded genericide, it would have harmful consequences. It would open the door for rival companies to use the “Xerox” name, and the option to go to federal court if the company wanted to use it could be removed.
XEROX has maintained its trademark status, but there are still many local stores that simply use Xerox as a synonym for photocopying. Such cases exist in Brazil, Bulgaria, Russia, but also in our country.
From the XEROX brand situation we can draw the following conclusions: first of all, if you are the owner of a trademark, you must use it correctly: it is recommended to use it as an adjective, and never as a verb or noun, to prevent its transformation into a generic term. Secondly, registering a trademark gives you exclusive rights to it, so you can prosecute and sue anyone who infringes this right.
