Genericide: A Trademark Owner’s Worst Nightmare
By Jillian Raines
Every year, society loses more and more trademarks to genericide. While trademark owners try to raise public awareness of their unique brand through advertising, attempts usually prove futile. Genericide acts fast—one generic use leads to another until the once-protectable trademarks are wiped out from the market. Could one of Apple’s trademarks be next?
Currently, Apple is embroiled in a dispute about the phrase “App Store” (two words), which the company laid claim to in July 2008 through a trademark registration. In January, Microsoft decided to challenge the validity of Apple’s trademark in the phrase, claiming it has become generic. This hasn’t stopped Apple from attempting to enforce its mark, however; last month, Apple sued Amazon for using the phrase “Appstore” (one word) in relation to Google’s Android.
While media sources have been active in covering the current dispute, they have been pretty quiet when it comes to connecting the “App Store” debate to the long history of trademark genericide.
A valid trademark contains a term or phrase used in connection with a good or service to indicate source. Genericide is what occurs when the public no longer associates the trademarked term or phrase as an indicator of source, but instead perceives it as a description of the product itself or with the class of products. While establishing a brand name that really catches on with the public is something marketing departments strive for, it tends to make legal departments quite uneasy. After all, from the legal side of things, the closer this tie, the more likely the term will lose its distinctiveness as something cluing the public in on where the product comes from and creep into genericide territory.
In Apple’s case, Microsoft is claiming that “App Store” has fallen victim to genericide and points to Apple co-founder Steve Jobs’ public use of the term in a generic way as evidence. (In a conference call with analysts he was quoted as saying, “Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android.”) And Microsoft is right. Unfortunately for Jobs and Apple, generic use of the term by the trademark owner is one of the factors courts consider when analyzing whether to cancel a trademark on the basis that it has become generic (an action governed by the Lanham Act).
Other factors that courts will consider include proof of widespread use by competitors of the trademarked term that is not contested by the seller, media usage of the term, dictionary definitions of the term, and consumer reports indicating that the public believes the term to be a generic one.
But how often do these cases actually make it to trial? You may be surprised by genericide’s extensive history.
Let’s start with “aspirin”. Today, when you ask someone for aspirin, you’re probably offered any assortment of Tylenol, Advil or Bayer products. The term “Aspirin” was trademarked by Bayer, Co. as long ago as 1899. Soon after, competitors referred to their own medicines as aspirin, but Bayer can’t blame its competitors for the ensuing aspirin generocide; the chief culprit was Bayer itself. A widespread Bayer advertising effort for the product featured the slogan, “Bayer — Tablets of Aspirin.” The “Aspirin” trademark was officially canceled in the United States in 1921 when the Southern District of New York held that aspirin referred to the class of medicines, and not uniquely the Bayer product.
Another example of genericide by lawsuit is found in the term “thermos”. In the early twentieth century, King-Seeley Thermos, Co. trademarked “Thermos” and marketed a brand of vacuum-insulated bottles. The company sued to defend its trademark against use by others in 1963 in New York’s Second Circuit. The court found the term had become generic because a number of trade organizations had used the term, and the company only objected in particular instances. In addition, the court found that King-Seeley’s own marketing scheme had used thermos generically.
Yet another example of a trademarked term that bit the generecide bullet is “pilates”. Pilates, Inc., a Montana company with offices across the country, registered two trademarks for “Pilates” — one in connection with “exercise instruction services” in 1986 and another relating to “exercise equipment” in 1995. But in 2000, the Southern District of New York ruled that the “Pilates” trademark was a generic term for a type of fitness method, similar to “yoga” or “karate”. Using the term pilates to describe the particular type of exercise method weakened Pilates, Inc.’s case. Affiliates of Pilates, Inc. even used the term generically during the trial — a fact not lost on the court.
In addition to these examples, there are plenty of other trademarks that while still on the books, are probably on their way out. Think about the term “Kleenex.” Kimberly-Clark owns a trademark in Kleenex, even though to many people, Kleenex and tissue are pretty much synonymous. Other examples of trademarks that the public and lawyers alike consider generic: “Band-Aid” (for an adhesive bandage), “Xerox” (for a photocopier) “Frisbee” (for a flying disc-shaped toy), and “TiVo” (for a digital video recorder) — just to name a few. Google has also had to fight against genericide ever since the acceptance of the verb “googling” by Merriam Webster’s Dictionary.
Fortunately for Apple, the company seems to be aware that protecting trademarks from the evils of genericide is a full-time job. After all, suing Amazon for “Appstore” demonstrates that the company is not being complacent about itstrademarked name. The company also recently released a commercial (genericide’s version of a public service announcement) that begins: “If you don’t have an iPhone, you don’t have the App Store; so you don’t have the world’s largest selection of apps.”
Apple’s commercial suggests that the company knows how much public perception of the “App Store” phrase matters. The commercial seems to be an attempt to sway the public to think of “App Store” as only associated with the iPhone and Apple.
But the commercial may be too little too late. What do you think, readers?