Protect Your Trademark From Committing Genericide

As a direct result of the pandemic, face-to-face communication among groups and with strangers has been virtually suspended.  People and businesses alike have come to rely on Zoom as a viable, safe alternative to in person meetings.  The general pubic may or may not know that “Zoom” is a trademark owned by Zoom Video Communications, Inc. for its downloadable computer software enabling multiple users to engage in live digital communications.  Zoom has two applications to register “ZOOM” currently pending before the U.S. Trademark Office.  Unfortunately, the general public may be totally unaware that by using the term “zoom” or “zooming” to describe the act of videoconferencing, rather than as a trademark to identify the company Zoom as the source of its software product, they may be inadvertently complicit in the potential genericide of the “ZOOM” trademark.  Genericide is the death knell for an otherwise valid and potentially valuable trademark.

Genericide occurs when the general public comes to identify a brand name with an entire category of products and services, rather than a specific product or service and the provider of it.  Genericide happens slowly and insidiously when even a famous or highly unique trademark becomes so pervasive in everyday common usage that the word no longer functions as a trademark to identify the company as the source of its products or services.  Examples of proprietary, coined trademarks that fell prey to genericide include:  Aspirin, Cellophane, Thermos, Yo-Yo, Escalator, Laundromat, Dry Ice, and Trampoline.

Consider the potentially devastating impact of genericide on lost consumer good will, revenue, market share, and wasted advertising and promotional expenditures.   For perspective, according to Forbes, the top three most valuable trademarks in 2020 are: Apple ($205 billion), Google ($167.7 billion) and Microsoft ($125.3 billion).  Businesses large and small are not immune and must exercise constant preventative vigilance, including Google, for example.

In March of 2012, two individuals acquired 762 domain names incorporating the term “Google,” which they likely planned to hold hostage.  Ultimately a federal court of appeals found in favor of Google holding that “google” was not a generic term and was a protectable trademark even if a trademark is widely-used by the generic public as a verb. The Court further opined that genericide must be established as it pertains to internet search engines and not merely the general act of searching the internet, as argued by the two individuals. Even though Google prevailed, it was an eye-opening and costly experience for the company.   Similarly, Xerox spent a considerable sum of money rescuing its Xerox mark from the brink of genericide following widespread use of the words “Xerox” and “Xeroxing” to describe the general act of photocopying.  Other companies have not been so fortunate.

In short, a proactive and vigilant approach, rather than a reactionary one, is key.  This might include consumer education, establishing internal guidelines for use of the mark, or clear and express language in licensing and other contracts.  These issues typically implicate complex legal considerations, so it is always good practice to consult with an attorney with experience in trademark and business law.

To pre-empt future problems, be smart and be prudent.  It is good business practice to discuss your proposed trademark with an Intellectual Property attorney before spending money developing it.  The Intellectual Property attorney will provide a comprehensive legal opinion and practical advice from which you can make a responsible, well-informed decision. Spending time and money now can prevent a costly and potentially crippling infringement action against your company.

This article is not legal advice but should be considered as general guidance in the area of intellectual property law.  Andrew Zulieve, and Jordan Payne Hay, are intellectual property law attorneys; others in the firm handle business and other matters.  You can contact us at 207.784.3200.

Since 1853, Skelton Taintor & Abbott has provided a full range of high-quality legal services to the individuals, companies, and municipalities of Maine. The firm’s main office is located in Auburn and in January 2019, a mid-coast office was opened in Waldoboro.