Generic Mark and its treatment

Submitted to:
Ms. Kuhu Tiwari
Submitted by:
Kapil Maini
Sem VII
Roll No.: 62
Date of submission: 10
th
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.

1
15 U.S.C. 1051-1127 (1976).
2
For the legislative history of the Lanham Act and earlier trademark statutes, see generally
TRADE-MARKS-REGISTRATION AND PROTECTION, [1946] U.S. CODE CONG. & AD. NEWS
1274. The United States Supreme Court has stated that "[t]he protection of trade-marks is the
law's recognition of the psychological function of symbols . . . . If another poaches upon the
commercial magnetism of the symbol [the trademark owner] has created, the owner can obtain
legal 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 courts
protected marks of trade goods as early as the fifteenth century).
For a discussion of the history of trademarks, see generally F. SCHECTER, THE HISTORIcAL
FOUNDATIONS OF THE LAW RELATING TO TRADEMARKS (1925) (traces trademark law from its
origins to its modem treatment). See also Brock, Merchandising Value of Trademarks, 42
TRADEMARK REP. 701 (1952); Diamond, The Historical Development of Trademarks, 65
TRADEMARK 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 a
mark delineated by 1064 are: (1) fraudulent obtainment of registration; (2) registration in
violation of 15 U.S.C. 1052 or 1054 (1976); (3) misrepresentation of the source of a product
by or with permission of the registrant; (4) abandonment of registration; (5) inconsistency of
continued protection with the governing statutes; and (6) genericness.
4
Id. The Lanham Act refers to a generic trademark as "the common descriptive name of
an article." Id. 1064(c). The Act, however, does not use the term "generic" in any statutory
definitions.
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Competitors of the holder of a generic mark, therefore, can use the mark to describe
their products.
5

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 holder
6
.
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



5
When a term is held generic it "precludes federal trademark registration, prevents a
federal trademark registration from becoming incontestable, and is a ground for cancelling a
federal 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 statuswhich 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=9
9
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."
13
The defendant

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 its
validity 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), in
which the court stated that "[t]he basic question, one of fact, under the test formulated many
years ago by Judge Learned Hand and followed since, is: 'What do the buyers understand by
the word for whose use the parties are contending?,"
13
272 F. 505, 507 (S.D.N.Y. 1921).
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responded that the product became part of the public domain upon expiration of the
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

14
Id. As Judge Hand phrased the issue in Bayer Co. v. United Drug Co.: "[T]he question
is whether the buyers merely understood that the word 'Aspirin' meant this kind of drug, or
whether it meant that and more than that; i.e., that it came from the same single, though, if
one 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 by
itself, 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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genericness. A term would not be held generic under this standard unless it meant
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

17
Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (term is generic if buyer
understands 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 to
the buying public during the period covered by the present suit. In other words, did it simply
mean 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.
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descriptive of the product,
20
could be afforded trademark protection under the
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

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,
Williams, 30 App. D.C. 348, 350 (1908), quoted in Kellogg Co. v. National Biscuit Co., 305
U.S. 111, 117 (1938).
21
Under the doctrine of secondary meaning, a term that could not originally have been
appropriated as a trademark may become, by usage, "distinctive" and be afforded protection. 15
U.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, the
common law right .. . to be free from the competitive use of these words as a trade-mark or
trade name."); Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920) (COCA-COLA "means a
single thing coming from a single source, and well known to the community .... [lit has
acquired a secondary meaning in which perhaps the product is more emphasized than the producer
but to which the producer is entitled."); The French Republic v. Saratoga Vichy Spring
Co., 191 U.S. 427, 435 (1903) ("geographical names often acquire a secondary signification indicative
not only of the place of manufacture or production, but of the name of the manufacturer
or producer and the excellence of the thing manufactured or produced, which enables the
owner to assert an exclusive right to such name .... ).
22
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938) (emphasis added). But see
Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920).
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infringement. In light of more recent cases, it seems clear that "genericness" and
"secondary meaning" represent distinct concepts. Yet, because the Supreme Court
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

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

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 by
the defendant's generic use of the word "thermos" in lower case type. Accordingly, the court
allowed the defendant to use the term "thermos" but limited its use by requiring the company's
name, Aladdin, to precede any generic use of the term. In recognition of the term's retained
trademark significance, the court allowed the plaintiff to maintain exclusive use of all its existing
forms of the word THERMOS, such as in all capitals of the same size and in a form of stylized
capitals. Id. at 27
29
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938).
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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
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
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genericness. In a recent Seventh Circuit decision, for example, the court examined the
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.
32
The meaning of a term also frequently shifts over time

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 accepted
English usage" of the word "light." In addition to dictionary evidence, the court took judicial
notice 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 American
Thermos Prods. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 20 (D. Conn. 1962) (court
examined 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 dictionary
editors. Although this method may be suitable for determining word meaning in the
context of general usage, it is inadequate for assessing the marketplace meaning of a trademark.
P a g e | 17

and 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 consumers
33
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

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).
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) (rejecting
use of witness testimony as biased and unrepresentative).
P a g e | 18

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
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

34
For a discussion of surveys in trademark cases, see generally Kunin, The Structure and
Uses of Survey Evidence in Trademark Cases, 67 TRADEMARK REP. 97 (1977); Sorenson, The
Admissibility 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).
P a g e | 19

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
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).
P a g e | 20

In general, the function of a trademark is to distinguish goods and services in the
marketplace from other companiesnot to describe the goods or services. A
trademark can be instrumental to developing your brand identity and building
customer loyalty, so, consistency is key. You want to present your mark in the same
way across all mediaprint 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

35
https://www.legalzoom.com/articles/the-problem-of-genericide-in-trademarks
P a g e | 21

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
Always accompany the Trade Mark with a product description
e.g. Wear LEVIS jeans
Eat KELLOGGS 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.

P a g e | 22

Conclusion

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.

P a g e | 23

Bibliography

BOOKS REFERED

Salmond and Haustons Law of Torts, 18
th
Ed.
Halsburys Laws of England, 4
th
Ed., Reissue 1995.
Passing Off, Law and Practice by John Drysdale and Michael: Silverleaf, 2
nd

Ed.
Narayan .P, Law of Trade Mark and Passing-off, 6
th
Edition, Eastern Law
House.


ELECTRONIC SOURCE OF DATA
www.manupatra.com
www.westlaw.com
www.indiankanoon.org
www.legallyindia.com