INTA BULLETIN ARCHIVE: JANUARY 2001

ASPIRIN Brand or Aspirin Tablets?

Avoiding the "Genericide" Headache in the United States

A country's trademark "graveyard" can be a scary place - particularly for the owners of trademarks of highly successful products. The United States trademark graveyard contains the following words, now generic, that were once well known marks: cellophane, escalator, and thermos. Even an apparently distinctive mark such as YO-YO can come to the end of its rope.

All of these trademarks were victims of "genericide" in the U.S. - the process by which a mark loses its ability to function as a source identifier and becomes the name of a particular type or category of product.

ASPIRIN, a registered trademark of Bayer AG in most of the world, is the generic word in the U.S. for the pain reliever acetylsalicylic acid (also known as ASA). Because trademark rights are generally country-specific, a mark that has become generic in one country might still function and be recognized as a trademark in another.

The Canadian Intellectual Property Office, for example, maintains four registrations for ASPIRIN (with and without an accompanying design) as a trademark for various types of drugs, including what is referred to in the United States simply as aspirin tablets.

Genericide is most common among brands for innovative and highly successful products. Although marketers strive to have their brands become well-known "household words," this success can backfire when consumers gradually begin using them to identify the product rather than its source.

Thus, "thermos," originally a brand for a new kind of vacuum-insulated bottle for keeping liquids hot or cold, became the generic word for vacuum bottles.

Sophisticated trademark owners know what appropriate measures to take in order to prevent generic use of their marks. When introducing an innovative product, it's important to introduce not just a brand name but a generic name for the product as well-so that the public doesn't have to use the brand to identify competing products.

Thus we have PALM connected organizers, WALKMAN personal stereos, and ROLLERBLADE in-line skates. If the inventors of the escalator instead promoted the product as a "moving stairway," ESCALATOR might still be a trademark.

Other safeguards include having automated and/or manual systems to identify generic misuse of marks and an active program of writing warning or even cease-and-desist letters in response to misuse.

Some companies, especially those that own highly successful marks that consumers might be tempted to use generically, run anti-genericide advertisements. Such ads are especially effective if seen by marketing and sales personnel, journalists, and other people in a position to influence how consumers use marks.

Professional writers rely on magazines such as Writer's Digest, the Columbia Journalism Review, and Editor & Publisher for information relating to the profession. INTA's Trademark Hot Line is also an important source. Trademark owners reach this very important audience by placing ads in those publications identifying the proper way to use particular trademarks. By advertising the proper use of a trademark, the trademark owner may prevent misuse from accidentally creeping into publications, which can most easily be used as evidence of genericide.

An ad from the company that popularized the photocopier warns "When you use "xerox" the way you use "aspirin," we get a headache."

The ROLLERBLADE anti-genericide ad even pokes gentle fun at the theory behind such advertisements, stating "This message comes to you courtesy of our attorneys, who are correctly referred to as 'extraordinarily anal."

By: Timothy J. Lockhart and Cullen G. Taylor, Hogan & Hartson L.L.P., McLean, Virginia, USA