GENERIC MARKS AND ITS TREATMENT

(Project Report)

Submitted to

Ms. Kuhu Tiwari

Faculty Trademark (Hons. –II)

By

Arun Karoriya
B. A. LL. B. (Hons.) Student
Semester – VII, Roll No. 40

Hidayatullah National Law University

Uparwara Post, Abhanpur, New Raipur – 493661 (C.G.)

1
 ACKNOWLEDGEMENTS

I would like to take this opportunity to express my deep sense of gratitude towards my course teacher,
Ms. Kuhu Tiwari, for giving me constant guidance and encouragement throughout the course of the
project.

I would also like to thank the University for providing me the internet and library facilities which were
indispensable for getting relevant content on the subject, as well as subscriptions to online databases and
journals, which were instrumental in writing relevant text.

Arun Karoriya

Roll no. 40

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 TABLE OF CONTENTS

1. Acknowledgements 2
2. Introduction 4
3. Objectives: 6
4. Research Methodology 6
5. Defining The Term Genericide 7
6. The Legal Standards For Determining Genericness 8
7. The Evidentiary Requirements In Determining Genericness 13
8. What Steps Can Be Taken 17
9. Conclusion 20
10. Bibliography 21

3
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
3
for a number of reasons. 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

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. The United States
Supreme Court has stated that "[t]he protection of trade-marks is the law's recognition of the psychological function
of symbols . . . . If another poaches upon the commercial magnetism of the symbol [the trademark owner] has
created, the owner can obtain legal redress." Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S.
203, 205 (1942). Cf. Reporter's Note, Southern v. How, 79 Eng. Rep. 1243 (K.B. 1617) (English courts protected
marks of trade goods as early as the fifteenth century). For a discussion of the history of trademarks, see generally F.
SCHECTER, THE HISTORIcAL FOUNDATIONS OF THE LAW RELATING TO TRADEMARKS (1925)
(traces trademark law from its origins to its modem treatment). See also Brock, Merchandising Value of
Trademarks, 42 TRADEMARK REP. 701 (1952); Diamond, The Historical Development of Trademarks, 65
TRADEMARK REP. 265 (1975); Leeds, Trademarks-Our American Concept, 46 TRADEMARK REP. 1451, 1451-
54 (1956); Paster, Trademarks-Their Early History, 59 TRADEMARK REP. 551 (1969).
3
15 U.S.C. § 1064 (1976). The six independent grounds for cancelling the registration of a mark delineated by §
1064 are: (1) fraudulent obtainment of registration; (2) registration in violation of 15 U.S.C. § 1052 or § 1054
(1976); (3) misrepresentation of the source of a product by or with permission of the registrant; (4) abandonment of
registration; (5) inconsistency of continued protection with the governing statutes; and (6) genericness.
4
Id. The Lanham Act refers to a generic trademark as "the common descriptive name of an article." Id. § 1064(c).
The Act, however, does not use the term "generic" in any statutory definitions.
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." Id. at 2-3
(footnotes omitted).

4
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 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

6
"Genericised trademark". Nowsell.
7
"How Long Does a Trademark Last?". Patents 101 (Hyra IP).

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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.

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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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:genericmarks&catid=28:g&Itemi
d=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 Determining 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."13The 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
While the formula articulated by Judge Hand in Bayer Co. v. United Drug Co., id., preceded the Lanham Act, 15
U.S.C. §§ 1052-1127 (1976), by 25 years, it has retained its validity and continues to be applied in contemporary
trademark infringement cases. See, e.g., Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 490
(S.D.N.Y. 1968), in which the court stated that "[t]he basic question, one of fact, under the test formulated man
years ago by Judge Learned Hand and followed since, is: 'What do the buyers understand by the word for whose use
the parties are contending?,"
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,"15
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. 16 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.

The standard articulated by Judge Hand establishes a relatively heavy burden of proof for the
defendant in a trademark infringement suit to meet in order to show genericness. A term would
not be held generic under this standard unless it meant only the kind of good sold. Thus, if the
term indicated even marginally the seller of thegood, the trademark would be afforded
protection. 17 In decisions subsequent to Bayer, however, the courts have weakened substantially
this initial standard. Although the subsequent cases purport to follow Judge Hand's standard,
only two decisions since Bayer have interpreted this standard to require the high level of
consumer understanding that he intended. The Second Circuit in DuPont Cellophane Co. v.
14
Id. As Judge Hand phrased the issue in Bayer Co. v. United Drug Co.: "[T]he question is whether the buyers
merely understood that the word 'Aspirin' meant this kind of drug, or whether it meant that and more than that; i.e.,
that it came from the same single, though, if one please anonymous, source from which they had got it before." Id.
15
Id. "Prima facie I should say, since the word [ASPIRIN] is coined and means nothing byitself, that the defendant
must show that it means only the kind of drug to which it applies."
16
Id. at 513. ASPIRIN was a species of the drug known generically as "acetyl salicylic acid" to those in the trade. Id.
at 514
17
Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (term is generic if buyer understands name of
product to mean only kind of good sold).

9
Waxed Products Co. reiterated the formula first enunciated in Bayer, and required the defendant
alleging the genericness of the term CELLOPHANE to show that the name meant only the kind
of good sold.18 In the other case, Marks v. Polaroid Corp., 56 the Massachusetts District Court
required the defendant to show that the term had lost all its trademark significance to the
consuming public as a whole. In upholding the validity of the trademark POLAROID, the Marks
court stated that it would protect the trademark holder "[w]here the possibility of some deception
[of the public] remains real and the need of competitors to satisfactorily describe their products is
satisfied by the availability of several common nouns or adjectives suitable for that purpose ....
."19 This standard, like that in Bayer, requires a clear showing of genericness, because the party
challenging the trademark's validity must show that it means only one kind of good sold and
retains no trademark significance.

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., 59 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 descriptive of the product, 20 could be afforded trademark protection under the
doctrine of secondary meaning. If the term was found to have acquired a secondary meaning to
the public beyond its common definition, it would be protected because it would no longer be
merely descriptive of the product. 21 The Court in Kellogg required the party alleging that the

18
Id. at 81. The court stated that "[t]he real problem is what [CELLOPHANE] meant to the buying public during the
period covered by the present suit. In other words, did it simply mean a transparent glycerinated cellulose hydrate
regenerated from viscose, and nothing more, or did it mean such an article of commerce manufactured by or
originating with the complainant?" Id. at 77 (emphasis added).
19
Marks v. Polaroid Corp., 129 F. Supp. at 270.
20
The Court of Appeals for the District of Columbia affirmed the Commissioner of Patents' refusal to register the
term SHREDDED WHOLE WHEAT, holding that the words were "descriptive" and "accurately and aptly describe
an article of food .... 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).
21
Under the doctrine of secondary meaning, a term that could not originally have been appropriated as a trademark
may become, by usage, "distinctive" and be afforded protection. 15 U.S.C. § 1052(o (1976). See Armstrong Paint &
Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 335 (1938) (secondary meaning "establishes, entirely apart from
any trade mark act, the common law right .. . to be free from the competitive use of these words as a trade-mark or
trade name."); Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920) (COCA-COLA "means a
single thing coming from a single source, and well known to the community .... [lit has
acquired a secondary meaning in which perhaps the product is more emphasized than the producer
but to which the producer is entitled."); The French Republic v. Saratoga Vichy Spring
Co., 191 U.S. 427, 435 (1903)

10
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."22 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 Relevant Universe in the Genericness Decision

In seeking to ascertain the level of consumer understanding attained by a particular trademark,

the court applies its legal standard of genericness in an examination of a population segment, or
universe, that it has deemed relevant. Because a term may not have become generic to all
population segments at the time of judicial examination, a court may find a word generic to one
segment of the population, but hold that the same word retains its trademark validity to another
segment. Indeed, in the Bayer case, the court held the term "aspirin" generic to the general public
but granted it protection to those in the trade.23 Alternatively, if a court were to examine only the
general consuming public, it could hold a trademark generic to all persons, regardless of the
views of those in the trade.24 The selection by the court of the particular societal segment to

22
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938) (emphasis added). But see Coca-Cola Co. v. Koke
Co., 254 U.S. 143, 146 (1920).
23
Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
24
No court that has held a term generic has expressly stated that it would not consider the

11
examine can be determinative of the genericness question and the degree of protection, if any,
that the mark is afforded.25 The precedent for analyzing different segments of the public, like the
legal standard for genericness, can be found in the Bayer decision. 26 In Bayer, Judge Hand
designated the relevant universe as "the general consuming public, composed of all sorts of
buyers, from those somewhat acquainted with pharmaceutical terms to those who knew nothing
of them." 86 Although the ultimate consumers' perceptions of the term "aspirin" was "the crux of
this controversy, the court considered other classes of buyers, such as those in the trade. As a
result of this dual analysis of the term's meaning, the court was able to fashion a remedy that
granted continued trademark protection with respect to those persons in the trade who recognized
ASPIRIN as a trademark. Because Judge Hand intended the legal standard for genericness to
provide a high degree of protection to the trademark owner, it is likely that he intended to
maintain a similar degree of protection in the analysis of different population segments. By
paralleling the legal standard analysis, the relevant universe aspect of the genericness
determination permits a decision that offers the greatest degree of protection to the trademark
holder, and thus, is consistent with the primary objective of the Lanham Act. Several decisions
since Bayer have utilized a similarly segmented analysis of the relevant universe. For example,
in a trademark infringement suit concerning the trademark THERMOS, the court, as in Bayer,
examined two population segments-consumers and retailers-and found that the mark had retained
its trademark significance to those in the trade and to a segment of the consumers.27 Thus, rather
than requiring a complete cancellation of the trademark, the court fashioned a remedy to account
for those persons who recognized the term's trademark validity.28 Other courts have expressly

trade, although many have examined only the consuming public and disregarded tradesmen. See, e.g., Donald F.
Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965). But cf. Stix Prods., Inc. v. United Merchants &
Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968) (the mark's "meaning to a nonpurchasing segment of the
population is not of significance; rather, the critical question is what it means to the ultimate consumer").
25
This analysis focuses primarily on direct methods of ascertaining levels of consumer understanding in a relevant
universe, such as polling or survey techniques. In those instances in which a court uses indirect methods, such as a
dictionary definition, no particular segment is isolated in the court's examination. Rather, the court focuses primarily
on the producer of the goods. See Miller Brewing Co. v. G. Heileman Brewing Co., 427 F. Supp. 1204, 1206-07
(W.D. Wis.) (determination based largely on dictionary meaning of word "light"), rev'd, 561 F.2d 75 (7th Cir. 1977),
cert. denied, 434 U.S. 1025 (1978). See notes 103-04 & accompanying text infra.
26
Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
27
American Thermos Prod. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 23 (D. Conn. 1962), affd sub nom. King-
Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963).
28
The court held that the trademark THERMOS was valid but would not be infringed by the defendant's generic use
of the word "thermos" in lower case type. Accordingly, the court allowed the defendant to use the term "thermos"
but limited its use by requiring the company's
name, Aladdin, to precede any generic use of the term. In recognition of the term's retained

12
refused to consider any segment other than the consuming public. Some courts, for example,
have stated that they will consider only "the mind of the consuming public"29 in making the
genericness determination. This departure from the Bayer analysis clearly adds to the uncertainty
surrounding the manner in which courts make genericness determinations. Moreover, the
decision may be particularly unfair to the trademark holder in those cases in which a term is held
generic, and the court has not examined population segments other than the general public.
Similar to the need for a legal standard that affords protection to the holder by requiring a high
degree of consumer understanding, courts should define the relevant universe broadly to account
for the possibility of different perceptions by the various population segments. Given the Act's
objective of protecting the trademark holder, and the inequities that abound because of the
inconsistency of past decisions, the appropriate method of determining genericness should
embody all universes that are possibly relevant and fashion a remedy accordingly.

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 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.

trademark significance, the court allowed the plaintiff to maintain exclusive use of all its existing forms of the word
THERMOS, such as in all capitals of the same size and in a form of stylized capitals. Id. at 27
29
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938).

13
Indirect Determinations

The indirect methods of determining genericness are based solely on logical assumptions of the
consumers' response to a trademark. The major fault with the indirect method is its failure to
provide a firsthand measurement of consumer understanding, because of its in-herent margin of
error. Examining a term's dictionary definition and its use in publications are common indirect
methods for determining genericness. In a recent Seventh Circuit decision, for example, the court
examined the word "light" as an adjective in conjunction with the word "beer."'30 The court found
the term generic by relying primarily on the word's dictionary definition and its generic use in
other publications.31 Other courts have examined such factors as advertising, sales volume, and
duration and consistency of the term's use' to ascertain consumer understanding.

Although indirect methods provide some useful measure of genericness, such methods have
numerous deficiencies that render them unacceptable as the sole or even primary means of proof.
Indirect methods of determination permit too great a degree of judicial discretion in weighing the
evidence' because courts employing only indirect methods fail to verify their findings by
examining the relevant universe. In practice, indirect methods provide little more than a judicial
estimate of the level of consumer understanding concerning a particular trademark. The method's
inability to substantiate empirically the level of consumer understanding leaves a court's findings
without any substantial indicia of reliability. As a result, the court must apply its legal standard
of genericness to an insufficient factual basis.

The indirect methods also are defective because they do not adequately define and segment the
relevant universe. The focus of the indirect method is on the producer rather than the consumer.
If the court examines only a term's dictionary definition, for example, it fails to evaluate the
term's significance to members of the relevant universe. Such an examination ignores the

30
Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977), cert. denied, 434 U.S. 1025 (1978).
31
Id. at 80. The court stated that its decision was based in part on "generally accepted English usage" of the word
"light." In addition to dictionary evidence, the court took judicial notice of the definitions and usage of the adjective
in "reference works on chemical technology, industry publications, and magazines and newspapers generally." Id. at
81. See also American Thermos Prods. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 20 (D. Conn. 1962) (court
examined word THERMOS and noted that "the great majority of dictionaries show the word 'thermos' both as a
synonym for vacuum insulated or as a noun standing for a product so described, and also state that it is a trade-
mark"), aff'd sub nom., King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963).

14
possibility of different definitions within separate market segments.32The meaning of a term also
frequently shifts over time and through usage, yet indirect analysis does not account for such
changes. Moreover, the special meaning associated with a term that a trademark holder creates
through its use cannot be measured by its dictionary definition. Similarly, basing a determination
of genericness on a term's appearance in publications fails to gauge the impact of the term on
consumers. This method evaluates only the message the trademark holder seeks to transmit
rather' than the extent to which the message is received and understood. Thus, the application of
the indirect methods threatens the trademark holder with the loss of the mark without the
opportunity for the court to assess accurately the level of consumer understanding the mark has
achieved.

The Bayer standard requires a more precise calculation of consumer understanding within the
relevant universe than the indirect methods provide. Although the court in Bayer examined only
indirect methods of proof, it did so because the direct methods, such as survey research, were not
admissible into evidence in 1921. The necessity for an accurate assessment of a term's trademark
significance mandates the use of survey research methodology to provide the most accurate and
objective analysis of the term's impact upon the consumer.

Direct Determinations

Many of the inherent deficiencies of the indirect methods can be overcome by direct testing of
consumers' perceptions. Direct testing attempts to assess consumer understanding of a trademark
through either in-court examination of consumers 33 or survey research designed to measure
consumer responsiveness to a trademark. The direct method of proof has several advantages over
the indirect means.

The two kinds of direct methods applied in trademark cases, courtroom testimony by consumers
and nonpartisan probability surveys, measure consumer understanding differently. While witness

32
Dictionaries define words according to use by writers deemed authoritative by the dictionary editors. Although
this method may be suitable for determining word meaning in the context of general usage, it is inadequate for
assessing the marketplace meaning of a trademark. Surveys should be conducted in order to record term meanings
more accurately. See Lunsford, Trademarks and Semantics: The Use and Misuse of Trademarks in Dictionaries and
Trade Journals, 62 TRADEMARK REP. 520 (1972).
33
For a discussion of how consumer witnesses are used in trademark cases, see Lunsford, The Mechanics of Proof
of Secondary Meaning, 60 TRADEMARK REP. 263, 272 (1970) (rejecting use of witness testimony as biased and
unrepresentative).

15
testimony may be superior to the indirect methods, in that it indicates to some extent the level of
consumer understanding, this technique is often disregarded by the courts. The technique is
considered inadequate because parties will only solicit self-serving witnesses who may not
accurately reflect the level of consumer understanding. Furthermore, witnesses presented by the
parties may not be truly representative of the relevant universe. Thus, while witness testimony is
simple and relatively inexpensive, the evidence produced is frequently of minimal value.

The other direct method employs survey research to establish the level of consumer
understanding in the relevant universe. 34 Generally, parties contract professional research
organizations to conduct nonpartisan probability surveys. These surveys involve questioning a
small percentage of the relevant universe to establish the level of consumer understanding.
Through the use of statistical procedures, the persons comprising the sample are randomly
selected so that their answers are representative of the entire relevant universe.

Survey evidence has a unique advantage over all other types of evidence in that only this
method, when properly employed, can provide an accurate measurement of the level of
consumer understanding the term enjoys. Survey evidence is presented to the court in the form of
numerical percentages representing responses to specific questions. When provided with this
statistical information, the court is able to apply its genericness standard directly rather than
having to speculate about the level of consumer understanding. For example, in E.I. DuPont de
Neinours v. Yoshida Int'l, Inc. plaintiff DuPont was able to establish through its survey that 68%
of the relevant universe identified its product TEFLON as a brand name while only 31%
recognized it as generic. The court, in applying the primary significance standard to this
evidence, found that the term had not become generic.

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

34
For a discussion of surveys in trademark cases, see generally Kunin, The Structure and
Uses of Survey Evidence in Trademark Cases, 67 TRADEMARK REP. 97 (1977); Sorenson, The
Admissibility and Use of Opinion Research Evidence, 28 N.Y.U.L. REV. 1213 (1953);
Zeisel, The Uniqueness of Survey Evidence, 45 CORNELL L.Q. 322 (1960).

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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.

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.

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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.”

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.35

FRKelly 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

35
https://www.legalzoom.com/articles/the-problem-of-genericide-in-trademarks

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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.

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.

vSuper Valu™ x Super Value

x S.V. Range

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. 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.

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BIBLIOGRAPHY

 BOOKS REFERED

 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.
 V. K. Ahuja, Law Relating to Intellectual Property Rights, 2nd Edition 2013, lexis nexis

 ELECTRONIC SOURCE OF DATA

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

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