"Genericide" Part 1: When Brand Dominance Can Result In Loss Of Your Trademark Rights

• Published date: 08 December 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: JMB Davis Ben-David Ltd.
• Author: Mr Ivan Lipshitz

As an entrepreneur, have you ever considered that your brand or product name could become so famous and successful, and its market dominance so pervasive, that it becomes a victim of its own success? This may sound counter- intuitive but, unfortunately, it happens more often than you may realize. This phenomenon is often referred to as "Genericide", and it occurs as a result of extensive and uncontrolled use by consumers whereby a well-known and once protected trademark becomes so dominant and pervasive that it loses its association and identification with the source of a product or company to which it relates. Instead, it becomes a generic name for a whole class of goods or products. It is a nightmare scenario for all successful brand owners and trademark owners alike as it results in the loss of trademark rights.

In this first part of a three-part series on "Genericide," I will explain what it is and how it is determined. In the second article I do a deep dive into the trademark spectrum to determine distinctiveness and trademark strength, give some familiar examples of "Genericide" and discuss the legal standard which courts use to determine if it exists with respect to a specific trademark. In the third article in this series, I will suggest a number of key avoidance strategies and preventative measures to be adopted to avoid "Genericide" sounding the death-knell to your well-known brand and even putting your entire business at risk.

What is a Trademark?

There is no more important or valued asset that differentiates your brand, product or technology from its competitors and underpins its place in the market space you occupy than your brand name and trademark, product name and logo. According to one recent estimate, brands account for, on average, 17% of corporate enterprise value. As published in an article here.

The world's most valuable brand unsurprisingly is AMAZON' which was recently estimated at a brand value worth a staggering US $ $415.9 billion, as published by the World Branding Forum here.

A trademark can be a word, name, symbol, logo, design, or any combination thereof that distinguishes the goods and services of one party from those of others and indicates the source of the goods and services. Anything that you use to identify your brand or business can be a trademark. Famous trademarks include everything from McDonalds' golden arches to Nike's "JUST DO IT'" slogan, to "AMAZON'", or "MICROSOFT'". It is this valuable IP which acting as a...