Emilio Tovilla, Contributing Member 2023-2024
Intellectual Property and Computer Law Journal
I. Introduction
When a person needs a tissue, there is a good chance her or she will ask for a “Kleenex.”[1] Despite receiving a Puffs brand tissue, both the person receiving the tissue and the person giving the tissue subconsciously associated the word “Kleenex” with “tissue.” A number of the world’s strongest trademarks have reached such a heightened level of popularity, each is now synonymous with the generic term for its entire class of goods.[2] Aside from Kleenex, other marks have been used as alternatives for generic terms, such as Google for “internet search.”[3] Despite their popularity, both Google and Kleenex have maintained their distinctive trait because consumers still distinguish the brands from other competing corporations.[4] This allows the continuation of legal protection for a qualified trademark.[5]
The purpose of marks is to identify the source of products and services, ensuring consumer protection in a competitive business market.[6] Trademarks are most successful and considered “strong” when the public easily identifies the source.[7] Examples of this are the bitten apple for Apple, the iconic swoosh logo for Nike, and the world-famous golden arches for McDonald’s.[8] While mark owners want to have the strongest marks possible to ensure they obtain registration from the USPTO, strong marks can have unpredictable consequences outside the owners’ control. The mark “Kleenex” has been used generically for some time; however, the tissue company has managed to avoid genericization. Other trademarks have not been as fortunate, enduring detrimental fates of cancellation from common use. Because trademarks cannot be generic, use of trademarks as everyday language poses a huge risk to mark owners. In most cases it is not the intention of consumers to generically use marks.[9] However, regulating the generic use of marks is difficult, making genericization complicated and unpredictable.
This article will discuss the impact of genericization on American trademarks. Part II will discuss what genericization entails and a debrief on generic terms that were surprisingly once trademarks. Part III will discuss who is impacted by genericization, the different recommendations to reduce the chance of genericization, and what Kleenex and other corporations have done to prevent genericization of their marks. Finally, Part IV will conclude by raising unanswered questions of whether better strategies exist to reduce genericization and if the responsibility to reduce genericization goes beyond trademark owners.
II. Background
Trademarks identify the source of products or services to consumers.[10] Under the Lanham Act, for a trademark to be valid and legally protected, it must be distinctive.[11] This means the mark must be easily recognized by consumers and clearly identify the mark owner as the source of products or services.[12] A generic mark cannot be registered because it typically functions as common word within the scope of corresponding goods or services.[13] The generic nature does not establish a source indication, which is the main purpose of a trademark.[14] This would be the case if a brand that sells bikes trademarked the word “bicycle.”[15] Although generic marks are typically rejected and do not obtain registration, some marks become generic after years of being registered with the USPTO due to genericization.[16]
What is Genericization?
Genericization occurs when a trademark reaches an extreme level of popularity and consumers begin using it as a substitute term for an entire category of goods or services.[17] The continued use of famous brands as generic terms then results in a mark owner’s loss of exclusive rights to the trademark and its registration with the USPTO.[18] For this reason, typically the more popular a brand becomes the more likely its trademark will become generic.[19] Further, the cancellation of a trademark due to genericization usually means the trademark can never qualify for registration again.[20] Genericization usually occurs in the course of trademark litigation or trademark cancellation petitions.[21] Defendants in a trademark infringement case will assert that infringement did not occur because the mark is no longer associated with its brand to consumers, therefore becoming generic.[22] Under the Lanham Act, which governs trademark law, petitions for cancellation provide a claim for a trademark owner to request the nullification of an existing mark.[23] The claim includes allegations of harm and damages caused by the registered trademark in controversy.[24] The moving party asserts that the trademark in question is generic for the goods or services it is registered for, making it impossible for consumers to distinguish the source.[25]
The reason for disqualification of registration is rooted in the purpose of trademarks, which is to identify the source of a consumer’s goods or services.[26] When trademarks become generic consumers begin to think of the mark as an indicator of what the product is rather than identifying the source.[27] In the case of Band-Aid, the word “Band-Aid” will indicate a generic small, adhesive bandage to consumers rather than a Band-Aid brand adhesive bandage.[28] It is important to recognize that the cancelation of a trademark due to genericization is only for the market in which the trademark was used.
Famous Genericized Trademarks
Possibly one of the most alarming aspects of genericization is how often it occurs. Many former trademarks are used generically and are now the generic term for an entire class of goods. Due to the extreme genericization of some terms, it is difficult to fathom what the original generic term was at the time of the trademark. Terms such as Trampoline, Zipper, Dry Ice, Aspirin, and Thermos are notable examples of general terms that were all trademarks at one point.[29] The predecessor and generic term for Thermos was “vacuum flask,” invented in 1892 while the generic term for Trampoline was “rebound tumbler.”[30] Dry Ice, trademarked in 1925, was the commercial brand name for solid carbon dioxide until 1932.[31] At the time Zipper was granted a trademark, the word “zip” already existed as a noun and verb, referring to the motion and the noise associated with zipping.[32] The trademark was granted for overshoes with fasteners, coined “zipper boots.”[33]
Among the genericized terms mentioned, the biggest mark and one of the most famous examples of a genericized trademark is the pharmaceutical invention Aspirin.[34] Originally belonging to German company Bayer, Aspirin was patented in 1899 and was also granted trademark protection.[35] In its prime, Aspirin was a brand for the painkiller acetylsalicylic acid.[36] Aspirin is now a generic term for painkiller in the US, causing the mark to lose its distinctiveness as a source indicator and allowing competing brands to use the former trademark freely.[37]
After Bayer lost its Aspirin trademark, it continued to sell its version of acetylsalicylic acid.[38] Bayer applied for and received a new trademark known as “Bayer Aspirin” since the singular word “aspirin” became a generic term for painkiller.[39]
The genericization of these famous marks demonstrates the powerful impact of common use of trademarks by consumers. While the growth and popularity of a trademark may seem like a positive trend, the negative consequences of genericization have left current trademark owners weary of what could potentially happen to their trademarks if no action is taken to preserve them.
III. Discussion
Genericization results in the complete loss of trademark rights. However, most consumers do not own trademarks, which makes it difficult to understand the significance of trademark cancellation. For this reason, it is important to explain the negative implications that genericization can have on both mark owners and consumers, as well as recognizing efforts by mark owners to reduce the likelihood of genericization.
Who Genericization Impacts
Often, mark owners affected by genericization tend to be large corporations. This can be seen by both current and former mark owners. Examples include the loss of “App Store” and “Band Aid” by Apple and Johnson & Johnson respectively, and Kleenex, currently owned by Kimberly-Clark.[40] Because it seems that those who benefit most from trademark protection are corporation making sizable profits, it may be difficult to justify public policy as a reason to increase trademark protection. However, the dissolving of trademarks over time can eventually impact consumers.
The benefit of a trademark to consumers is that it identifies the source of the products and services they are purchasing.[41] At the grocery store, the Coca-Cola mark will help distinguish a 12-pack of Coke from Pepsi. Likewise, the Starbucks symbol on the highway will inform drivers the Seattle based coffee chain will have a location at the next exit. When a trademark becomes genericized, it eliminates the legal protection of the mark, which then enters the public domain.[42] This allows other brands and businesses to freely use the former trademark without penalty.[43]
Despite the loss of protection for their trademark, mark owners still have the right to sell products or services. However, because a genericized trademark is available for use by all, consumers no longer associate the mark with a particular source.[44] As the generic use of a mark spreads, it increases the chance of consumer confusion.[45] This occurs when consumers assume that any product or service in a specific category is associated with the genericized term, despite the products or services coming from different companies.[46] Because the source identification of competitors is compromised, the purpose of trademarks disappears. This makes consumer confusion and the weakening of brand identity a significant concern.[47]
On the side of mark owners, a weakened reputation is a major consequence that stems from genericization. A trademark that was once strong and rose to fame due to its solid foundation and source identification runs the risk of losing its uniqueness.[48] As the mark becomes generic, important aspects such as quality and innovation dwindle.[49] This can have serious consequences on the company’s reputation and mark, making it unrecognizable and losing its distinction.[50] Within trademark law, this blow to a mark owner’s reputation is known as dilution.[51] Dilution is the use of a mark in commerce that is similar to a famous mark that by association confuses or diminishes consumer perception of the famous mark.[52] For example, if an appliance company began using the white apple logo on their products, it could dilute Apple’s mark by potentially confusing consumers and creating speculation as to whether Apple began selling new products.[53]
Preventing Genericization
It is imperative that mark owners understand trademarks have the purpose to be source identifiers and not a descriptor of their goods or services.[54] IP attorneys have made various recommendations on steps that mark owners can take to minimize the chance of genericization. Some recommendations aim at educating the public to avoid using trademarks generically, while others add elements surrounding the trademark to add a protective layer from common use.
One effective recommendation for mark owners is to use marks as adjectives rather than nouns or verbs in association with their products.[55] For example, a mark owner can add the word “brand” or the generic product name after the trademark to distinguish it from competing products.[56] “Nike shoes” or “Kleenex brand tissues” allow the use of the generic term for the product with the distinctive mark that informs consumers what type of tissue or shoes they are purchasing.[57] Further, it helps maintain Nike’s and Kleenex’s marks as source identifiers rather than turning either into generic marks.[58] In situations where a generic term for a product or service does not exist, it is advised to create a generic term to be paired with the trademark.[59] This takes place in the development stages before a brand is launched to plan ahead and minimize any likelihood the trademark becomes the generic term.[60]
Despite urges to avoid using marks as verbs, courts have concluded that the use of marks as verbs does not automatically constitute genericization. In Elliot v. Google, Inc., the court held that the use of “Google” as a term for an online search does not automatically deem it genericide.[61] The court explained that using a mark as a verb randomly or unintentionally does not make it a generic term as long as consumers continue to use the mark to distinguish the product or service from other competitors.[62] Regardless of the holding in Elliot, there is still risk of genericization and loss of legal protection if mark owners are not cautious and take action to minimize generic use.[63]
Another recommendation is for the source to have multiple goods and market the trademark as a brand for a line of products.[64] The challenge however is that some corporations have niche products or have always produced a singular type of product. This makes the integration of new products impractical. Some recommendations, although quite simple and obvious, are crucial to avoid genericization. These recommendations encourage mark owners to ensure correct use of their marks.[65] For example, trademark holders should maintain proper grammatical usage of their marks and correct any spelling changes, plurals, or abbreviations because this can indicate to consumers that improper use is acceptable.[66] Owners of trademarks should also refrain from using their marks to refer to the type of goods or services they produce.[67]
Mark owners should use a registration symbol or TM/SM symbol for non-registered marks as often possible.[68] The registration symbol, commonly used in this format ®, provides notice to consumers and competitors that a trademark or service mark is registered with the USPTO.[69] In cases where a mark has not been registered, the TM symbol, which stands for trademark and seen in this format TM, is used in connection to products and services.[70] The SM symbol stands for service mark and is seen in superscript like this SM.[71] A service mark is used in connection to a source that only provides services and no products.[72] The execution of such simple, yet effective practices can help decrease the likelihood of dilution of a mark through improper use.[73]
Finally, a major recommendation, and one that many corporations take, is the instruction of proper trademark use to the public. The generalized use of trademarks is usually unintentional and due to a lack of education in how trademarks work.[74] Consumers can be reached through campaigns, social media, and commercials.[75] In teaching consumers how to properly use trademarks, mark owners should also be vigilant of how competitors and the media are using their trademarks.[76] The primary way to do this is by monitoring or policing one’s trademark.[77] This emtails monitoring how consumers use the trademark, how the trademark is used in print, and informing those who violate the trademark’s protected status that the mark is legally protected.[78] This also extends to licensees, which are parties that have been granted legal permission to use a trademark.[79] If improper use is discovered, the mark holder may retain legal counsel to determine any possible legal options to stop this misuse.[80]
Preserving Trademarks
Due to the genericization of popular trademarks, current mark owners and corporations have actively made attempts to avoid the same fate as their counterparts. Kleenex has launched a social media campaign to educate consumers on how to properly use its trademark.[81] The campaign is known as “the lawyers of Kleenex”, which thanks people who use the mark correctly, taking a positive reinforcement approach.[82] Additionally, Kleenex has added “brand tissue” to its packaging, creating the composite marketing strategy of “Kleenex brand tissue.”[83] This explains to the consumer that Kleenex is a brand of tissues; in other words, Kleenex is the brand and tissues are the product.[84]
Outside of Kleenex, other corporations have taken similar approaches to preserve their trademarks.[85] Velcro, another popular mark in danger of genericization, posted a humorous video on YouTube that pleads consumers to not say “Velcro” generally.[86] Throughout the video, singing actors not only discourage the generic use of “Velcro” but give an educational explanation as to the negative consequences that could ultimately end in the loss of the Velcro mark.[87]
IV. Conclusion
Trademark genericization has raised immense concern among trademark owners. While there are times when trademarks have become so generic that nullification is necessary, the availability of cancellation petitions and common overuse of trademarks by consumers seems to encourage a challenging environment for trademarks. This points to the theory that there needs to be more protection for trademarks within the law.
Because trademark genericization is more prevalent than mark owners would like, two questions arise from the disappearance of marks. First, what are the most effective means of reducing genericization. Although different tactics have been used, with some showing success, the risk of genericization has not been eliminated completely. This leaves the intellectual property community wondering what can be done to preserve marks. Further, tactics seem to rest the responsibility of trademark protection on mark owners, when usually the genericization of marks is due to public misuse. This raises the second question, which asks whether the responsibility of reducing genericization should go beyond trademark owners. In other words, do consumers and the general public have a duty to respect trademarks and watch their use of trademarks in general reference to products and services.
Presently, it seems that the best way to preserve trademarks is to educate the public on appropriate use and taking legal action for infringement or misuse when possible. Until better strategies can be developed, or trademark protection increases, Kleenex will need to have faith that their efforts will disincentivize the use of “Kleenex” as the generic term for a tissue.
[1] Whitson Gordon, How a Brand Name Becomes Generic, The New York Times, (June 24, 2019), https://www.nytimes.com/2019/06/24/smarter-living/how-a-brand-name-becomes-generic.html
[2] Generic Trademark, Mandour Law, (Jan. 25, 2024), https://www.mandourlaw.com/generic-trademark/
[3] Whitcomb Selinsky, Losing a Trademark to Genericization: The Case of Taco Tuesday, JD Supra, (Aug. 15, 2023), https://www.jdsupra.com/legalnews/losing-a-trademark-to-genericization-5084422/
[4] Id.
[5] Stephanie Williams, Is your brank at risk of becoming generic?, Brion Raffoul, (Jan. 18, 2024, 2:30 P.M.), https://brionraffoul.com/2024/trademarks/is-your-brand-at-risk-of-becoming-generic/
[6] Trademark, Cornell L. Sch. Legal Info. Inst., (Jan. 25, 2024), https://www.law.cornell.edu/wex/trademark
[7] Strong Trademarks, US Pat. and Trademark Off., (March 31, 2021, 12:00 PM), https://www.uspto.gov/trademarks/basics/strong-trademarks
[8] Michael Kondoudis, Famous Trademarks: A Complete Guide, MK Law, (Jan 25, 2024), https://www.mekiplaw.com/famous-trademarks/
[9] 15 Product Trademarks That Have Become Victims of Genericization Consumer Reports, (July 19, 2014), https://www.consumerreports.org/consumerist/15-product-trademarks-that-have-become-victims-of-genericization/
[10] What is a Trademark?, US Pat. and Trademark Off., (July 18, 2023, 12:00 PM), https://www.uspto.gov/trademarks/basics/what-trademark.
[11] Lanham Act , Cornell L. Sch. Legal Info. Inst., (June 2023), https://www.law.cornell.edu/wex/lanham_act
[12] Strong Trademarks, supra note 7.
[13] Id.
[14] Id.
[15] Id.
[16] Michele Lawson, Genericide – The Killer of Trademarks, Smith & Hope Law, (June 4, 2021), https://smithhopen.com/2021/06/07/genericide-the-killer-of-trademarks/
[17] Id.
[18] Melissa Retana, What is Genericization?, Carson Patents, (Jan, 25, 2024), https://carsonpatents.com/what-is-genericization/
[19] Id.
[20] Generic Trademark, supra note 2.
[21] Id.
[22] Id.
[23] Josh Gerben & Sophie Edbrooke, Trademark Battles: A Guide to Filing or Responding to a Petition to Cancel, Gerben Law, (Jan. 25, 2024), https://www.gerbenlaw.com/blog/trademark-battles-a-guide-to-filing-or-responding-to-a-petition-to-cancel/
[24] Id.
[25] Id.
[26] How to avoid a generic trademark, War IP Law, (Jan. 25, 2024), https://wariplaw.com/how-to-avoid-a-generic-trademark/
[27] Id.
[28] Id.
[29] 15 Product Trademarks, supra note 9.
[30] Id.
[31] Id.
[32] Id.
[33] Id.
[34] Genericide, Mandour Law, (Jan. 25, 2024), https://www.mandourlaw.com/genericide/
[35] Bayer patents aspirin, History, (Nov. 24, 2009), https://www.history.com/this-day-in-history/bayer-patents-aspirin
[36] Genericide, supra note 34.
[37] How Kleenex, Chapstick, Popsicle, Frisbee, Velcro, and other brands avoid becoming generic, Erik M Pelton & Associates, PLLC, (June 5, 2020), https://www.erikpelton.com/how-kleenex-chapstick-popsicle-frisbee-velcro-and-other-brands-avoid-becoming-generic/
[38] Alain Strowel, Bayer’s aspirin: a lasting success without patent and strong trademark protection, IPdigIT, (Oct. 28, 2011), https://www.ipdigit.eu/2011/10/bayers-aspirin-a-lasting-success-without-patent-and-trademark-protection/
[39] Id.
[40] 15 Product Trademarks, supra note 9.
[41] What is a Trademark?, supra note 10.
[43] Id.
[44] Trademark Genericide: Threat to Brand’s Success, Intellectual Vidhya, (Oct. 3, 2023), https://intellectvidhya.com/trademark-genericide/
[45] Id.
[46] Id.
[47] Id.
[48] Id.
[49] Id.
[50] Id.
[51] Dilution (Trademark), Cornell L. Sch. Legal Info. Inst., (Nov. 2022), https://www.law.cornell.edu/wex/dilution_(trademark)
[52] Id.
[53] Id.
[55] How Kleenex, supra note 37.
[56] Genericide, supra note 34.
[57] Id.
[58] Id.
[59] Anna Kim, Elizabeth Pierce, & Lora Graentzdoerffer, Best Practices to Avoid Genericide, International Trademark Association, (May 1, 2019), https://www.inta.org/news-and-press/inta-news/famous-and-well-known-marks-committee-develops-best-practices-to-avoid-genericide/
[60] Id.
[61] Sukanya Balasubramanian, Trademark Genericide, Selvam & Selvam Law, (Oct. 31, 2021), https://selvams.com/blog/trademark-genericide/
[62] Id.
[63] Id.
[64] Id.
[65] How to avoid a generic trademark, supra note 26.
[66] Id.
[67] Id.
[68] Trademark Symbols, International Trademark Association, (Aug. 23, 2023), https://www.inta.org/fact-sheets/trademark-symbols/
[69] Id.
[70] Id.
[71] Id.
[72] Id.
[73] Id.
[75] Id.
[76] How to avoid generic trademarks, supra note 26.
[77] Andrew Rapacke, What Does It Mean If a Trademark Is Generic?, Rapacke Law, (Jan. 22, 2019), https://arapackelaw.com/trademarks/what-does-it-mean-if-a-trademark-is-generic/
[78] Id.
[79] Generic Trademark, supra note 2.
[80] Id.
[81] Michelle Cheng, The “Lawyers of Kleenex” are taking a soft approach to the hard realities of genericide, Quartz (Nov. 3, 2022), https://qz.com/the-lawyers-of-kleenex-are-taking-a-soft-approach-to-1849737749
[82] Id.
[83] How Kleenex, supra note 37.
[84] Id.
[86] Id.
[87] Id.
The University of Cincinnati Intellectual Property and Computer Law Journal 
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