Generic names describe a type of good or service and are therefore never allowed to be trademarked. However a trademarked word can become generic if consumers begin to use the term for a genre of goods rather than a specific one. This was the case for the “Hoover”, a term that William Henry Hoover coined for his upright vacuum cleaner, invented by James Murray Spangler in 1908. However, when their product became popular, consumers started using the noun to describe all types of vacuum cleaner and as a verb, “to hoover”. This meant that their trademark had now become a generic term and they were no longer able to claim their trademark protection. Many other famous brands such as Escalator, Aspirin and Yo-yo have all lost their trademark protection due to their trademarked word becoming generic.
Some names have managed to retain their trademark protection despite the fact that they have become generic. Biro, the world renowned French brand created by László Bíró that produces disposable ballpoint pens amongst other goods has become a generic word in Britain and Australia, however their trademark is still valid. The adhesive bandage “Band-aid” has also managed to retain its trademark despite having become a generic term for plasters in Australia, New Zealand, Canada and the US.
Furthermore, the term “UGG” trademarked by American footwear giant Decker in the US, Europe and China is a generic term in Australia and New Zealand for the sheepskin footwear that originates from their countries. For this reason the ugg boot producers in these two countries cannot trademark their products there and would only be able to trademark their goods abroad.
In recent years, Google has started to take action against its brand name becoming a generic term. I am sure that we have all used the word “Google” as a verb however, according to Forbes magazine in 2014 after presenting their case a court ruled that “Google” was not a generic term because “ the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.” So it seems that the multinational technology company’s trademark is safe for now.
Although your chosen trademark may not be a generic word when you first register it, if you are successful enough in your chosen marketplace like Google or Hoover you may run the risk of it becoming so. In order to combat this you should begin encouraging your consumers from early on to only use your brand name when describing your product and not to use it for the type of goods or services into which your product falls. As Hoover has proven, there is life after becoming a generic term but it is best to avoid it at all costs so that you can maintain the protection, exclusivity and value of your brand in the marketplace.
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Our unique database of trademarks for sale or license could save you time and help protect your brand.
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