“GENERIC MARK AND ITS TREATMENT ”

Submitted to:

PUT FACULTY NAME

Submitted by:

Anuradha Gupta

SEMESTER 1

Roll No.: XXX

NUSRL RANCHI
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Table of Contents
INTRODUCTION ..................................................................................................................... 3

RESEARCH METHODOLOGY .............................................................................................. 5

OBJECTIVES: .......................................................................................................................... 6

DEFINING THE TERM GENERICIDE .................................................................................. 7

THE LEGAL STANDARDS FOR DETERMINING GENERICNESS ................................... 8

THE EVIDENTIARY REQUIREMENTS IN DETERMINING GENERICNESS................ 10

WHAT STEPS CAN BE TAKEN .......................................................................................... 12

CONCLUSION ....................................................................................................................... 15

BIBLIOGRAPHY ................................................................................................................... 16
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INTRODUCTION

The Trademark Act of 1946, 1 popularly known as the Lanham Act, defines a
trademark as "any word, name, symbol, or device or any combination thereof adopted
and used by a manufacturer or merchant to identify his goods and distinguish them
from those manufactured or sold by others." Trademarks are afforded a legally
protected status under the Act because they benefit society by promoting competition
among sellers, protect the public from deceit, and guarantee product quality. 2 The law
protects trademarks by allowing them to be registered and retained for exclusive use
by the trademark holder.

Trademark protection, however, is not absolute, and the grant of exclusive use can be
cancelled for a number of reasons. 3 A ground for cancellation that has stirred recent
controversy is genericness that is, whether a trademark has become the "common
descriptive name of an article." 4 A trademark deemed generic loses its protected
status because it has ceased to perform the functions that justified its protection.
Competitors of the holder of a generic mark, therefore, can use the mark to describe
their products. 5

A generic trademark, also known as a genericised trademark or proprietary eponym, is

a trademark or brand name that has become the generic name for, or synonymous
with, a general class of product or service, usually against the intentions of the
trademark's holder6.

A trademark is said to become genericised when it began as a distinctive product

identifier but has changed in meaning to become generic. A trademark typically

1
15 U.S.C. §§ 1051-1127 (1976).
2
For the legislative history of the Lanham Act and earlier trademark statutes, see generally
TRADE-MARKS-REGISTRATION AND PROTECTION, [1946] U.S. CODE CONG. & AD. NEWS
1274.
3
15 U.S.C. § 1064 (1976).
4
Id. The Lanham Act refers to a generic trademark as "the common descriptive name of
an article." Id. § 1064(c).
5
When a term is held generic it "precludes federal trademark registration, prevents a federal trademark
registration from becoming incontestable, and is a ground for cancelling a federal registration at any
time."
6
"Genericised trademark". Nowsell.
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becomes "genericised" when the products or services with which it is associated have
acquired substantial market dominance or mind share such that the primary meaning
of the genericised trademark becomes the product or service itself rather than an
indication of source for the product or service. A trademark thus popularised has its
legal protection at risk in some countries such as the United States and United
Kingdom, as its intellectual property rights in the trademark may be lost and
competitors enabled to use the genericised trademark to describe their similar
products, unless the owner of an affected trademark works sufficiently to correct and
prevent such broad use.7

7
"How Long Does a Trademark Last?". Patents 101 (Hyra IP).
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RESEARCH METHODOLOGY

The present research study is mainly a doctrinal and analytical. Keeping this in
view, the researcher utilized the conventional method of using libraries consisting of
primary sources like Judgments of the Supreme Court and the High Court published
in various law journals.

As the study is doctrinal in nature, historical and doctrinal methods are adopted
because it is not possible to study purely by experimental methods.

The relevant material is collected from the Secondary sources. Material and
information are collected by legal sources like books on Law of Evidence, etc.
written by eminent authors.

Material has also been collected from the print and electronic media.From the
collected material and information, the researcher proposes to analyze the topic of the
study and tries to reach the core aspects of the study.
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Objectives:

1. To understand the concept of trademark and to analyze the same.

2. To define the term Generic Mark and tell its importance.
3. To find whether Generic mark can be a trademark or not.
4. To analyze that what steps can be taken for its treatment.
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DEFINING THE TERM GENERICIDE

Generic terms are not trademarks by definition. That is, they never can become
imbued with exclusive rights under trademark law. Generic marks are words or
symbols that communicate what the product or service is categorically. For example,
"shredded wheat" is a generic term that refers to the category of breakfast cereals that
are composed of layers of crunchy wheat strips molded together into a pillow-type
shape. This cereal may be manufactured by Kellogg's, Post or others., and each
manufacturer is free to use the term "shredded wheat" to advertise their version of the
cereal. This allows consumers to quickly surmise the product is what they want or
might not want as a product, not as a particular brand. 8

Among the intellectual property crowd, the loss of trademark rights when a term
enters common usage is called “genericide,” and it can mean the trademark loses its
protected status—which is bad news for trademark owners who strive to maintain the
uniqueness and distinctiveness of their brands.

The issue of genericide has come to the forefront recently because of a federal lawsuit
against Google in which David Elliott is seeking to invalidate some of Google's
registrations for the GOOGLE trademark, arguing that the word has come into
common usage as a verb that simply means to search the Internet. In support of these
claims, Elliott's complaint cites to entries in online dictionaries and other publications.

University of Notre Dame Law Professor Mark P. McKenna notes that leading up to
the Google lawsuit, there have been “a few cases [regarding genericide], but most of
them are quite old, and courts tend to be very reluctant to declare that a mark has
become generic.”9

8
http://www.marklaw.com/index.php?option=com_content&view=article&id=123:generic-
marks&catid=28:g&Itemid=9
9
https://www.legalzoom.com/articles/the-problem-of-genericide-in-trademarks
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THE LEGAL STANDARDS FOR DETERMINING

GENERICNESS

The courts, in order to make the genericness determination, have developed legal
standards that seek to define the nature of a generic term under the Lanham Act. In
making this determination, the basic question before the court is one of fact: "What do
the buyers understand by the word for whose use the parties are contending?" 10 Once
this assessment of consumer understanding has been made, however, the courts have
specified various levels of such understanding\ requisite to a legal determination of
genericness. Although courts suggest that the criteria for their determinations emanate
from a single landmark decision, Bayer Co. v. United Drug Co., 11 the standards that
they actually apply have been tailored to the facts of each particular case. Thus, the
legal standards for genericness may vary among jurisdictions, thereby adding greater
uncertainty to an issue already obfuscated by the necessary complexity of factually
assessing consumer understanding.

The Criteria for Detennining Genericness

The leading case concerning the cancellation of trademarks forgenericness, Bayer Co.
v. United Drug Co., was written in 1921 bythen district judge Learned Hand.
Although decided over fifty yearsago, this case remains the foundation for the
majority of genericness opinions.12

In Bayer, plaintiff Bayer Company brought a trademark infringement suit against a

competitor for the allegedly unfair use of the term ASPIRIN, plaintiff's common law
trademark for a drug chemically known as "acetyl salicylic acid." 13 The defendant
responded that the product became part of the public domain upon expiration of the
drug's patent several years earlier. The defendant asserted further that the term
ASPIRIN had become the common descriptive name for the drug and, therefore, had
also fallen into the public domain.

10
Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921).
11
272 F. 505 (S.D.N.Y. 1921).
12
Bayer Co. v. United Drug Co., id., preceded the Lanham Act, 15 U.S.C. §§ 1052-1127 (1976), by 25
years.
13
272 F. 505, 507 (S.D.N.Y. 1921).
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In determining whether the term had indeed entered the public domain, Judge Hand
articulated a standard for determining genericness based on levels of consumer
understanding. According to Judge Hand, if the buyer understands the name of the
product to mean only the kind or "genus" of goods sold, the term is generic and not
entitled to protection. If the product name, however, connotes not only the kind of
goods sold but something "more than that," such as the product's origin from a
particular seller or manufacturer, then it may deserve protection.14

Having established the appropriate standard, the court reviewed the evidence. At the
outset, Judge Hand stated that, because the word ASPIRIN was "coined and means
nothing by itself," a presumption arose that the term was not generic. He found this
presumption, however, to have been rebutted effectively with respect to consumer
understanding of the term because, given Bayer's marketing scheme, consumers "did
not know and could not possibly know the manufacturer of the drug which he got, or
whether one or more chemists made it in the United States." This was not the case,
however, with trade persons, including manufacturing chemists, physicians and retail
druggists, for whom the term ASPIRIN continued to mean a drug of Bayer's
manufacture.15 The court therefore held that the term ASPIRIN had lost its trademark
significance to the general public but continued to indicate to those in the trade the
species of the drug produced by Bayer.

Standards employed by other courts have deviated from the Bayer standard's strict
requirements. One of the major causes for the dilution of the Bayer standard, as
evinced in many subsequent decisions, was the language employed by the Supreme
Court in Kellogg Co. v. National Biscuit Co. decided fifteen years after Bayer. The
Court in Kellogg considered whether the term "shredded wheat," which had
previously been denied registration on the primary register on the ground that it was
16
descriptive of the product, could be afforded trademark protection under the
doctrine of secondary meaning. If the term was found to have acquired a secondary

14
Id. As Judge Hand phrased the issue in Bayer Co. v. United Drug Co.
15
Id. at 513. ASPIRIN was a species of the drug known generically as "acetyl salicylic acid"
to those in the trade. Id. at 514
16
Natural Food Co. v Williams, 30 App. D.C. 348, 350 (1908), quoted in Kellogg Co. v. National
Biscuit Co., 305 U.S. 111, 117 (1938).
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meaning to the public beyond its common definition, it would be protected because it
17
would no longer be merely descriptive of the product. The Court in Kellogg
required the party alleging that the term had acquired a secondary meaning and
seeking the exclusive right to its use to "show that the primary significance of the
term in the minds of the consuming public is not the product but the producer."18 This
standard implies that a term that designates the product and provides some indication
of the producer still can be generic if it does not primarily indicate the producer. Thus,
this standard permits a lesser level of consumer understanding than that required by
Judge Hand's formula in Bayer.

The standard applied in Kellogg is significant because subsequent decisions

erroneously have adopted its language and combined it with the Bayer standard to
make the genericness determination, despite the fact that the two cases arose in much
different contexts. Bayer addressed the question of whether a "coined" or "fanciful"
mark that was in no way descriptive had entered the public domain by becoming
generic. Kellogg, on the other hand, involved a descriptive term that previously had
been refused registration, but that plaintiffs claimed had acquired a secondary
meaning protectable at common law, thus rendering its use by others a trademark
infringement. In light of more recent cases, it seems clear that "genericness" and
"secondary meaning" represent distinct concepts. Yet, because the Supreme Court
used the terms interchangeably in Kellogg, other courts have been uncertain about
which standard should be applied

THE EVIDENTIARY REQUIREMENTS IN

DETERMINING GENERICNESS

Although the premise underlying the majority of legal standards for genericness is
consumer perception of a term, various genericness decisions of the courts require
different levels of consumer understanding to find a term generic. The application by

17
15 U.S.C. § 1052(o (1976). See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S.
315, 335 (1938)
18
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938) (emphasis added). Coca-Cola Co. v.
Koke Co., 254 U.S. 143, 146 (1920).
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the courts of different standards to determine genericness results in variations in the

types of evidence utilized to ascertain the level of consumer understanding. One
author has divided these evidentiary types into two categories, indirect and direct
methods of determination. Examination of the term's usage in publications,
advertisements, and dictionaries are examples of indirect methods. The direct
methods, by contrast, measure consumer perception by either in-court testimony of
consumers or opinion surveys. Direct methods of determination are better than
indirect when used in conjunction with the Bayer standard. Greater use of direct
methods is necessary in evaluating evidence in genericness cases.

Survey research evidence has another distinct advantage over other methods of
acquiring evidence in that researchers can segment the general population by polling
only within the universe deemed relevant. In Yoshida, the parties submitted various
surveys that included polls measuring consumer understanding of all persons over age
eighteen and of adult women only. The court then established the relevant universe as
adult women and ascertained the level of understanding without having its findings
affected by the trademark's impact outside the relevant universe. The surveys used in
Yoshida exemplify how survey research can sample a relevant universe effectively to
assess consumer understanding of a trademark challenged as being generic.

Properly constructed surveys have at least two distinct advantages over witness
testimony and the indirect methods. First, surveys can segment the relevant universe
from the general population, and second, surveys can accurately ascertain the level of
consumer understanding in this universe. Precise measurement of the mark's
significance is essential to protect a trademark holder from losing the mark because of
an inaccurate assessment of the mark's sigificance. Furthermore, in order to apply the
Bayer standard properly the court must fully comprehend the level of consumer
understanding before it can be certain that a mark indeed has become generic.
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WHAT STEPS CAN BE TAKEN

So what can trademark owners do to make sure their marks don't become victims of
genericide? First and foremost, ensure you follow trademark best practices for your
own registered trademarks and use your mark properly in written materials. That
means:

Do not use your own trademark as a verb (for example, XEROX® this);

Do not use your trademark as a noun, but as an adjective, followed by a descriptive

noun (for example, BMW® cars);

Do not use your trademark in possessive form (with an apostrophe s), unless the
trademark is possessive (such as McDonald's®);

Do not use your trademark in the plural form (for example, OREO® Cookies, not
OREOS).

In general, the function of a trademark is to distinguish goods and services in the

marketplace from other companies—not to describe the goods or services. A
trademark can be instrumental to developing your brand identity and building
customer loyalty, so, consistency is key. You want to present your mark in the same
way across all media—print as well as electronic.

Beyond that, trademark owners can also be careful to denote their distinctive words or
phrases with the appropriate mark (® if registered, ™ if unregistered).

Heymann maintains that genericide is “most likely to happen if competitors in the

field start using the trademark as the common name for their own products.”
Accordingly, the second most important things a trademark owner can do is keep an
eye out for competitors who are grabbing their mark and using it in a generic way.

Trademark owners can also be on the lookout for misuses of their marks by media
outlets and others. However, as hinted by Heymann, a soft touch when trying to
remedy the problem may be better than “firing off angry cease-and-desist letters.”
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Your brand is your most important asset. It not only defines who you are as company
today, it can determine what your company will be tomorrow, too.19

F.R. Kelly advise that you try to adhere to the following 5 rules so that your trade
mark is not added to the generic list.

1. Stand Out

A brand should always stand out from the works surrounding it. Using capital letters,
bold type, colour or quotation marks or a combination of the above can help to do
this. Whenever possible use the correct logo style.

2. Use Symbols

Where possible, indicate trade mark rights at least once in the text by placing the
appropriate symbol or legend beside the Trade Mark. The appropriate symbol is ™
where the Trade Mark is not registered and ® where registration has been obtained
(some companies chose to just put ™ on all brands to avoid confusion)

3. Use a Product Description

Always accompany the Trade Mark with a product description

e.g. Wear LEVI’S jeans

Eat KELLOGG’S cornflakes

Shop at CENTRA™ stores

A trade mark identifies a particular brand of some product; it is not the name of the
product itself and therefore is not a noun. It is an adjective and should always be used
in association with a product name or generic name. If you are not sure whether you
have used a trade mark as an adjective, try removing the trade mark from the
sentence. If the sentence still makes sense you have probably used the trade mark
correctly.

19
https://www.legalzoom.com/articles/the-problem-of-genericide-in-trademarks
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4. Be Consistent

Never vary, mis-spell or truncate your brand names. If you alter, distort, re-design or
produce your brand name using colours or letters other than those specified in your
current brand name/logo you could jeopardize the protection of the brands and/or
cause confusion for your customers.

5. Separate Different Brands

Where main brands are being used in combination with sub-brands, it is important to
ensure that each brand retains its separate identity and that the sub-brand is not
confused with the product description.
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CONCLUSION

A trademark is said to become genericised when it began as a distinctive product

identifier but has changed in meaning to become generic. A trademark typically
becomes "genericised" when the products or services with which it is associated have
acquired substantial market dominance or mind share such that the primary meaning
of the genericised trademark becomes the product or service itself rather than an
indication of source for the product or service. A trademark thus popularised has its
legal protection at risk in some countries such as the United States and United
Kingdom, as its intellectual property rights in the trademark may be lost and
competitors enabled to use the genericised trademark to describe their similar
products, unless the owner of an affected trademark works sufficiently to correct and
prevent such broad use

Relevant case law demonstrates that an accurate determination of genericness is

hindered by the lack of clear standards for the courts. Although the decisions are rife
with confusing terminology and unclear legal guidelines for deciding the issue of
genericness, the courts do have a choice between the various standards, and the most
equitable choice for the courts is a standard that reaches the high level of protection
that was defined by the court in Bayer Co. v. United Drug Co.20 The greater degree of
protection of trademark holders required by this standard would ensure a more
accurate and fair determination of the genericness issue. It also would be consistent
with the primary objective of the Lanham Act, to protect the valuable economic
interests of the trademark holder. Moreover, courts should consider all of the relevant
population segments in measuring consumer understanding of a term. By considering
different population segments, courts could avoid the inequity of holding a term
generic when the term in fact had retained its trademark significance in some markets.
Finally, the courts should use direct measurements of consumer understanding,
because only direct survey research methods provide the accurate measurements that
satisfy the need for a higher level of protection.

20 272 F. 505 (S.D.N.Y. 1921)

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Bibliography

 BOOKS REFERED

 Salmond and Hauston’s Law of Torts, 18th Ed.

 Halsbury’s Laws of England, 4th Ed., Reissue 1995.
 Passing Off, Law and Practice by John Drysdale and Michael: Silverleaf, 2nd
Ed.
 Narayan .P, Law of Trade Mark and Passing-off, 6th Edition, Eastern Law
House.

 ELECTRONIC SOURCE OF DATA

 www.manupatra.com
 www.westlaw.com
 www.indiankanoon.org
 www.legallyindia.com