Death of a Trademark: Genericide in the Digital Age

Article excerpt

And since we're talking trademark trivia here, be advised that heroin, zipper, aspirin, escalator, granola, yo-yo, and linoleum had heydays once upon a time as proper nouns, replete with capital letters and the distinction due singular entities.

Today, all have become common nouns, bereft of monetary value, victims of genericide.' This term was coined by marketing mavens to denote trademarks and brand names repeatedly lower-cased in everyday parlance. Usage demoted them to the humble rank of generic descriptor.'1

I. Introduction

The outcome was one that appeared neither fair nor equitable. The King-Seeley Thermos Company had brought a trademark infringement suit against Aladdin Industries claiming improper use of their trademark "thermos."2 In ultimately finding for the defendant, the court held that the term had become generic, and therefore, King-Seeley was not entitled to complete protection for that particular trademark.3 The U.S. District Court had virtually disregarded King-Seeley's investment in the trademark term "thermos." Despite the fact that King-Seeley had done everything required by the Lanham Act to generate a valid and protectible trademark,4 King-Seeley could not prevent the public from appropriating the mark as signifying the "thing" itself and not the "source of the thing." Generally, most producers strive to create an association in the public's eye between the product being marketed and the name coined for that product. Here arose a situation rife with irony; by successfully promoting the mark, King-Seeley lost their property right in that mark. As the Second Circuit noted in an earlier stage of the King-Seeley litigation, "[the] doctrine can be a harsh one for it places a penalty on the manufacturer who has made skillful use of advertising and has popularized his product."5 IMAGE FORMULA8

A. Genericide and the Internet

King-Seeley represents an example of genericide, or the process by which a trademark enters the public domain contingent upon a finding that the primary significance of a mark to the public is that of the product's category and not its source.6 This phenomenon is one that occurs to a somewhat frequent degree. In recounting examples of marks succumbing to this demise, the list is long and illustrious: aspirin,7 brassiere,8 cellophane,9 shredded wheat,10 yo-yo,11 and many others. Given this recurring outcome and the costs of having a trademark fall into the public domain through genericide, manufacturers of products utilizing initially protectible trademarks are put in the precarious situation of trying to market products so that the product name is popular in the minds of the public, but not too popular. Adding to this predicament is the recent expansion of commercial activity on the Internet. With the influx and rapid growth of Internet phenomena such as websites utilizing online ordering, online buyers clubs, consumer-to-consumer transaction websites, and an inherent increase in the speed and transferability of information, the manufacturer's quandary is seemingly complicated.

B. Scope of this Note

This Note reviews the current state of the law regarding the phenomenon of trademark genericide, including its past legal history and traditional rationale; assesses the methods of preventing genericide; and armed with this knowledge, predicts the interplay of the doctrine with the expansion of the Internet and includes suggestions for preventing genericide relating to e-commerce. IMAGE FORMULA13

II. Background

A. Origins of Trademark Law

Ancient potters first used trademarks approximately 3500 years ago to denote the source of their product, and the use of marks arises several times in the Old Testament.12 From those origins, trademarks developed over time and were first judicially recognized in a 1618 English case, Southern v. …