What does an escalator, heroine, a trampoline, and a thermos have in common? Genericide.
“Intellectual Property Law” is a collection of laws and cases that protects the fruits of human intelligence. A person’s inventions, creative works, logos and brand names that are used for goods and services all fall under the umbrella of IP law. It’s ironic, then, that when a trademark owner’s mark becomes so popular that the identity of the product can become synonymous with the product line, it can lose its legal protection. In other words, the trademark owner has been so successful in making its mark so popular the mark essentially becomes the generic term for a type of item. What is a thermos’ original generic name? A vacuum flask; but today, due to genericide, we call any vacuum flask a thermos.
So, while IP law can protect a company’s mark, a mark can also be the victim of a company’s success in a particular area. One of the best examples is the escalator. Otis held the original patent on the moving stairs, or inclined elevators, that bore the mark “Escalator” since 1910. However, in 1950 the U.S. Patent Office ruled that escalator had become the common name for a moving staircase. In Otis’s case, it didn’t help that the company, itself, had been advertising that they offered “the latest in elevator and escalator design.” Since Otis was using the trademark “Escalator” in a generic way, it was concluded that they could not stop others from also calling moving staircases “escalators.” As a result, Otis lost a valuable trademark through genericization. In Bayer’s case, they lost two marks, heroin and aspirin.
There are instances in which aggressive maintenance of a trademark name through cease-and-desist letters can successfully maintain a trademark name despite its widespread use. Xerox has been successful in maintaining its mark despite its widespread use as a verb to mean photocopying. Band-Aid, Jacuzzi, Crock-Pot (owned by Sunbeam), Jet Ski (owned by Kawasaki), Q-Tips and Sharpies are examples of products that have maintained their marks despite widespread use as a generic term. However, owners of valuable marks should keep in mind that defending a mark is important to maintain it. Not using a generic form of the mark and not using the mark as a verb are important to keep the mark from falling victim to genericization.
It is also worth noting that trademarks may be associated with more than a name. The shape or distinguishing characteristics of a product may also give rise to certain trademark rights. The shape of Coca-Cola bottles would be an example of mark arising from a design choice. Of course, registering the mark with the U.S. Patent and Trademark Office as well as the Secretary of State in Florida are important steps to protecting valuable marks.
For an interesting list of marks that have been genericized see: https://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks
