“Generic Mark and its treatment”

Submitted to:

Ms. Kuhu Tiwari

Submitted by:

Kapil Maini

Sem VII

Roll No.: 62

Date of submission: 10th October 2014

HIDAYATULLAH NATIONAL LAW UNIVERSITY, RAIPUR.

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ACKNOWLEDGEMENTS

I take this opportunity to express my gratitude and thanks to the Ms. Kuhu

Tiwari, Faculty, IPR-Trademark, Hidayatullah National Law University. for her

valuable suggestion, advice and constant encouragement and for providing

necessary facilities, without which I would never be able to complete the paper .

Special thanks to My Friends who cooperated for the Project and truly

cooperated physically and mentally. I thank all the people who cooperated with

me in doing my Research work and completing the Project in the way and

manner it should had to be completed. Without their cooperation it would have

not been possible to complete my report.

Last but not the least I would thank Librarians for their constant support,

effort and sincere dedication towards their work.

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Contents

ACKNOWLEDGEMENTS.............................................................................................................2

INTRODUCTION........................................................................................................................4

RESEARCH METHODOLOGY......................................................................................................6

Objectives:................................................................................................................................7

Defining the Term Genericide...................................................................................................8

THE LEGAL STANDARDS FOR DETERMINING GENERICNESS......................................................9

THE EVIDENTIARY REQUIREMENTS IN DETERMINING GENERICNESS.....................................15

What Steps Can Be Taken.......................................................................................................19

Conclusion..............................................................................................................................22

Bibliography............................................................................................................................23

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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

1 15 U.S.C. §§ 1051-1127 (1976).2 For the legislative history of the Lanham Act and earlier trademark statutes, see generallyTRADE-MARKS-REGISTRATION AND PROTECTION, [1946] U.S. CODE CONG. & AD. NEWS1274. The United States Supreme Court has stated that "[t]he protection of trade-marks is thelaw's recognition of the psychological function of symbols . . . . If another poaches upon thecommercial magnetism of the symbol [the trademark owner] has created, the owner can obtainlegal 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 courtsprotected marks of trade goods as early as the fifteenth century).For a discussion of the history of trademarks, see generally F. SCHECTER, THE HISTORIcALFOUNDATIONS OF THE LAW RELATING TO TRADEMARKS (1925) (traces trademark law from itsorigins to its modem treatment). See also Brock, Merchandising Value of Trademarks, 42TRADEMARK REP. 701 (1952); Diamond, The Historical Development of Trademarks, 65TRADEMARK 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 amark delineated by § 1064 are: (1) fraudulent obtainment of registration; (2) registration inviolation of 15 U.S.C. § 1052 or § 1054 (1976); (3) misrepresentation of the source of a productby or with permission of the registrant; (4) abandonment of registration; (5) inconsistency ofcontinued protection with the governing statutes; and (6) genericness.4 Id. The Lanham Act refers to a generic trademark as "the common descriptive name ofan article." Id. § 1064(c). The Act, however, does not use the term "generic" in any statutorydefinitions.5 When a term is held generic it "precludes federal trademark registration, prevents a

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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

federal trademark registration from becoming incontestable, and is a ground for cancelling afederal registration at any time." Id. at 2-3 (footnotes omitted).6 "Genericised trademark". Nowsell.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=99 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."13The defendant

responded that the product became part of the public domain upon expiration of the

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 itsvalidity 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), inwhich the court stated that "[t]he basic question, one of fact, under the test formulated manyyears ago by Judge Learned Hand and followed since, is: 'What do the buyers understand bythe word for whose use the parties are contending?,"13 272 F. 505, 507 (S.D.N.Y. 1921).

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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.

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

14 Id. As Judge Hand phrased the issue in Bayer Co. v. United Drug Co.: "[T]he questionis whether the buyers merely understood that the word 'Aspirin' meant this kind of drug, orwhether it meant that and more than that; i.e., that it came from the same single, though, ifone 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

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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. 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 17 Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (term is generic if buyerunderstands name of product to mean only kind of good sold).18 Id. at 81. The court stated that "[t]he real problem is what [CELLOPHANE] meant tothe buying public during the period covered by the present suit. In other words, did it simplymean 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,

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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 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

Williams, 30 App. D.C. 348, 350 (1908), quoted in Kellogg Co. v. National Biscuit Co., 305U.S. 111, 117 (1938).21 Under the doctrine of secondary meaning, a term that could not originally have beenappropriated as a trademark may become, by usage, "distinctive" and be afforded protection. 15U.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, thecommon law right .. . to be free from the competitive use of these words as a trade-mark ortrade name."); Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920) (COCA-COLA "means asingle thing coming from a single source, and well known to the community .... [lit hasacquired a secondary meaning in which perhaps the product is more emphasized than the producerbut to which the producer is entitled."); The French Republic v. Saratoga Vichy SpringCo., 191 U.S. 427, 435 (1903) ("geographical names often acquire a secondary signification indicativenot only of the place of manufacture or production, but of the name of the manufactureror producer and the excellence of the thing manufactured or produced, which enables theowner to assert an exclusive right to such name .... ).22 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938) (emphasis added). But seeCoca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920).

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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 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

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 thetrade, 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). Butcf. 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 understandingin a relevant universe, such as polling or survey techniques. In those instances inwhich a court uses indirect methods, such as a dictionary definition, no particular segment isisolated in the court's examination. Rather, the court focuses primarily on the producer of thegoods. 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, 561F.2d 75 (7th Cir. 1977), cert. denied, 434 U.S. 1025 (1978). See notes 103-04 & accompanyingtext infra.26 Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).

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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 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

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 bythe defendant's generic use of the word "thermos" in lower case type. Accordingly, the courtallowed the defendant to use the term "thermos" but limited its use by requiring the company'sname, Aladdin, to precede any generic use of the term. In recognition of the term's retainedtrademark significance, the court allowed the plaintiff to maintain exclusive use of all its existingforms of the word THERMOS, such as in all capitals of the same size and in a form of stylizedcapitals. Id. at 2729 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938).

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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.

Indirect Deterninations

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

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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 possibility of different definitions within

separate market segments.32The meaning of a term also frequently shifts over time and 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 acceptedEnglish usage" of the word "light." In addition to dictionary evidence, the court took judicialnotice 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 AmericanThermos Prods. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 20 (D. Conn. 1962) (courtexamined 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).32 Dictionaries define words according to use by writers deemed authoritative by the dictionaryeditors. Although this method may be suitable for determining word meaning in thecontext 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).

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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 Deterninations

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 consumers33 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 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

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) (rejectinguse of witness testimony as biased and unrepresentative).

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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 understanding without having its findings

affected by the trademark's impact outside the relevant universe. The surveys used in

34 For a discussion of surveys in trademark cases, see generally Kunin, The Structure andUses of Survey Evidence in Trademark Cases, 67 TRADEMARK REP. 97 (1977); Sorenson, TheAdmissibility 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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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

P a g e | 20

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.”

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

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

P a g e | 21

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.

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.

Conclusion

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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

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