The Problem of Success: when a Trademark becomes a Generic Term
"Kleenex" has it. "Tippex" has it. "Aspirin" has it. And ebay probably has it by now as well. The problem of success. These trademarks have a good name. Too good maybe, because consumers don't differentiate it as an actual brand name anymore.. The weather turns cold, your nose starts to run and you reach for a "Kleenex". Headaches are combated with "Aspirin". "Xerox it" is understood by everyone as a synonym for "photocopy it".
Legally, the situation is clear - a generic term cannot become a trademark. "beer" and "wine" will never be trademarks, neither will "dentist", "tax advisor" or "wine grower". More complex is the scenario whereby a new trademark can find itself being treated as a generic term.. There is then a threat of a watering-down of the trademark recognition through a more general usage or even the effective lapse of the trademark if it is widely used in this manner. The competition would use the trademark name freely and any advertising and publicity expenditure would have limited impact.
Naturally enough, a generic trademark does also produce some advantages: strong recognition and a positive image. The psyche of the consumer is addressed directly. The publicity resulting from a quasi-generic name is enormous and, in fact, priceless.
The clash between generic term and actual product results in a bit of a tightrope walk for enterprises, who react differently to the problem.
For example, in 2002 the Supreme Court in Vienna ruled that the term "Walkman" had asserted itself as the familiar name for a portable cassette machine and could not, therefore, be protected as a trademark any longer. And a spokesperson for Proctor and Gamble Nina Knecht issued an assurance that the undertaking would be doing everything to "thoroughly resist the development of a generic name" with respect to its trademarks "Pampers" and "Tempo".
Lego has included detailed instructions on the use of its name in its company profile: "always in capital letters" and plurals not allowed. The name should not stand alone, i.e. the company requests that the name should always stand in conjunction with another noun, e.g. LEGO bricks, LEGO Universe.
History has shown that, after the First World War Bayer lost their trademark protection for "Aspirin" with the consequence that the name is used, in English-speaking countries particularly, as a synonym for the substance. Since reports on the outcome of this experience have been mostly positive and since familiarity with the name is huge, Bayer spokesperson Harmut Alfasser judges the menace of trademark weakening to be however "not excessive".
But how does it come about that a trademark becomes a generic term ? The answer is priority, or a lead in innovation.. A new product can, when well-publicized (obviously), stick in the minds of consumers. Marketing expert Professor Manfred Bruhn from the University of Basel, in an interview with the German newspaper "Die Welt", let slip an unwritten rule of marketing :"It's usually better to be first in the market than to be second and better ". Being number one is always associated with being something unique, a special innovation, on which people place great importance, and this uniqueness is never applied to number 2. A till-then unnamed form of achievement receives the brand name of the innovator.
The path leading to a generic trademark is often lengthy. The history of the Aspirin trademark, as one of the oldest in Germany, began in the 19th. Century. However, in an age of swift technological change, generic trademarks seem to be popping up more rapidly. "to Google" was elected by the American Dialect Society as a Word of the Year 2002. Despite the company only existing for a short time, the generic warning lights are already flashing.
tos / rmb
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