Generic Terms and Trademark Protection: Understanding and Navigating the Landscape | Brooks Kushman P.C.
In a world where brand identity significantly influences consumer decisions, protecting the uniqueness of one’s product or service becomes more critical than ever. At the forefront of this issue is the concept of trademarks, distinctive signs or symbols that businesses use to distinguish their products or services from others. However, trademarks often walk a fine line, with the risk of becoming generic terms that are no longer subject to legal protection. A recent case involving the term “gruyere” highlights the importance of this issue.
In a recent ruling, the U.S. Court of Appeals for the Fourth Circuit upheld a U.S. Patent and Trademark Office (USPTO) decision that “gruyere” can be used to label cheeses produced outside of the Gruyère region of Switzerland and France. The USPTO rejected a request by two groups representing cheese producers from Switzerland and France seeking to restrict the use of “gruyere” to cheese originating from the Gruyère region. This case underscores the complex dynamics of generic terms and their exclusion from trademark protection.
Understanding Trademark Basics
Trademarks serve a critical function—they identify the origin of products or services, signaling to consumers that a product or service belongs to a particular brand. In essence, they are identifiers of a product’s source.
Trademarks are typically divided into four categories: arbitrary, suggestive, descriptive, and generic. Arbitrary, suggestive, and descriptive marks, because of their distinctive nature, qualify for trademark protection. However, generic terms are ineligible. These terms, which the public predominantly associates with a class or type of product or service rather than a specific source, are deemed unfit for exclusive use by one business.
Generic Terms: The Double-Edged Sword
Interestingly, a term can be generic for one product and a valid trademark for another. The term “Apple” exemplifies this: it’s a generic term when referring to the fruit, but acts as a distinctive and globally recognized trademark in the technology and electronics sector.
However, even strong trademarks can become victims of their own success when they become generic, a process known as “genericide.” Examples include terms like “escalator,” “thermos,” and “aspirin”—all terms that were once protected trademarks and have now become generic descriptors of certain product types.
Implications for Businesses
For businesses, the metamorphosis of a unique trademark into a generic term can bring about significant challenges. At first glance, having a brand name become common parlance may seem like a sign of success. Yet there are risks in the brand name becoming so common that it transforms into a generic term, thereby losing its distinctiveness and protection. This not only opens the floodgates for increased market competition, as competitors can freely use the now-generic term, but it also puts the business through the wringer of legal challenges.
The recent “gruyere” case underscores these issues, shining a spotlight on the delicate balance between making a brand name commonplace and the risk of it becoming a generic term.
Case Studies: Lessons Learned
The nuanced world of trademarks and generic terms offers a variety of case studies that provide valuable insights into these dynamics. Several notable brands have successfully navigated the challenges of trademark protection, ensuring that their names, despite their widespread use, remain distinctive and protected.
Google serves as a prime example. The company’s name, which is synonymous with online search, has become so pervasive that it’s often used as a verb in everyday language—to “google” something. However, Google has been vigilant in protecting its trademark from turning generic. Through legal efforts, public education campaigns, and consistent messaging that “Google” is a brand name and not a verb for searching the internet, the company has managed to stave off genericide, ensuring its name retains its distinctive identity despite its ubiquity.
On the other hand, there are brands which have seen their once-exclusive names become part of the common language, losing their trademark protection in the process. For example, the term “escalator” was originally a trademark of the Otis Elevator Company. Over time, however, it became the generic term for a type of moving staircase. Despite Otis’s attempts to protect its trademark, because the term became generic it lost its trademark protection.
Other previously trademarked terms, such as aspirin, trampoline, linoleum, and laundromat have suffered similar fates.
These case studies highlight the delicate balance companies must strike between promoting widespread recognition of their brand and preventing their trademarks from becoming generic. It is an ongoing challenge that requires vigilance, proactive measures, and a comprehensive trademark protection strategy.
Preventing Genericide: A Proactive Approach
Preventing a trademark from sliding into genericism requires a proactive approach.
Businesses should have a rigorous monitoring process in place to identify and address misuse, formulate a robust trademark protection policy, and actively enforce the company’s rights in the face of infringement.
In order to maintain the integrity of the brand’s presence in the marketplace, it’s imperative to stay abreast of any potential misuse of the trademark. Advise and educate the organization on the proper use of the trademark. Conduct regular training sessions, update guidelines, and consistently communicate with marketing and product development teams to ensure company-wide compliance with appropriate trademark use.
When potential infringement is detected, it is crucial that swift, decisive action is taken. The trademark protection strategy isn’t just reactive—it must also be proactive and preemptive, designed to mitigate risk and protect the company’s brand identity.
Conclusion
Navigating the tightrope between a successful, well-known brand and the risk of the brand name becoming a generic term can be challenging. It requires an understanding of the unique landscape of trademarks and generic terms and a comprehensive, proactive approach to trademark protection.
The case of “gruyere” serves as a timely reminder of these challenges and the importance of vigilance in protecting one’s brand name. By learning from the experiences of other brands and implementing sound strategies, businesses can protect their trademarks from becoming generic and maintain the distinctiveness and competitive edge that a strong brand name provides.
In a world where brand identity is tied to the success of a product or service, safeguarding a brand’s name from genericide is not just a legal concern—it’s a business imperative.
