1. www.ipera.in | Oct-Nov 2014 | IP Era 21
trademark
Only after immense effort and days of brainstorming does
a creative team arrive at a substantial brand name. It
then puts all its might behind making it famous and well-
known and voila one day, it becomes a household name. A
marketing success or a legal failure?
The saying “Familiarity breeds contempt” could not be
more true than in the case of generic trademarks. A unique
trademark tends to get genericized and loses its uniqueness
when people get too familiar with it. It becomes a common
term for that genus rather than a term for a species within
that genus and when this happens, it slips from its protected
status and enters the public domain. A trademark thus
popularised has its legal protection at risk, as its intellectual
property rights may be lost and competitors are enabled to
use the genericized trademark to describe similar products.
The process by which trademark rights are diminished or
lost as a result of common use in the market place is known
as genericization. This process typically occurs over a period
of time in which a mark is not used as a trademark (i.e.,
where it is not used to exclusively identify the products
or services of a particular business), where a mark falls
into disuse entirely, or where the trademark owner does
not enforce its rights through actions for passing off or
trademark infringement.
This is a fate that Xerox fears and is trying to avoid by
aggressive campaigns and this is a fate that Google escaped.
Yet this fate has engulfed many – Escalator, Aspirin,
Heroin…
The case of Escalator
We routinely use escalators. But did you know it was once a
brand name and not a noun to describe moving staircases?
Escalator inventor Charles Seeberger sold the trademark
name rights to the Otis Elevator Company in 1910. In 1950,
the landmark case Haughton Elevator Co. v. Seeberger
saw the end of Otis’s reign over exclusive use of the
word “escalator.” The Assistant Commissioner of Patents
Murphy’s decision rejected the Otis Elevator Company’s
appeal to keep their trademark intact, and noted that “the
Does genericization of
lead to the fall of brands?
Trademarks
When a trademark gets popularized in the marketplace, its legal protection is at risk as the
intellectual property rights in the trademark may be lost and competitors may be spurred to
use the genericized trademark to describe similar products
By Fatima Ansari
term ‘escalator’ is recognized by the general public as the
name for a moving stairway and not the source thereof”,
observing that the Otis Elevator Co. had “used the term as
a generic descriptive term…in a number of patents which
[had] been issued to them and…in their advertising matter.”
As the company itself made the mistake of using escalator
as a descriptive term and not a brand name, all trademark
protections were removed from the word “escalator” and the
term was officially genericized, and it fell into the public
domain.
The case of Xerox
Xerox is another classic case of genericization. Many may
not even know that it is a brand! The word “xerox” is used
as a synonym for “photocopy” (both as a noun and a verb)
in many areas people generally say “Can you Xerox these
documents for me?” However, the company was not to be
daunted and opted for a very aggressive ad campaign to
educate the public. A 2003 ad even lamented, “When you
use ‘Xerox’ the way you use ‘aspirin,’ we get a headache.
Yet, despite their efforts, many dictionaries continue to
include the use of “xerox” as a verb, including the Oxford
English Dictionary.
The case of Google
Google came in our lives in 1998 and then changed the way
we lived. We began to search for everything on its search
engine and without knowing it soon enough, ‘to google’
became a verb synonymous with web searching. Yet, Google
escaped the fate of being genericized as even today when
people say, ‘I am going to google’ they mean ‘I am going
to google on Google.’ They don’t say I am going to google
and then go to Yahoo! But when they say I am having
an aspirin, they may be referring to any aspirin made by
various pharma companies.
Recently, in Elliott v. Google, a federal court in Arizona held
that despite the public’s use of the word “googling” to mean
“searching on the Internet,” the “Google” word mark still
functions in the minds of consumers primarily to identify

2. www.ipera.in | Oct-Nov 2014 | IP Era22
trademark
Verb use of a
trademark is not
fundamentally
incapable of
identifying a producer
or denoting source.
A mark can be
used as a verb in a
discriminate sense
so as to refer to
an activity with a
particular product or
service
Disclaimer – The views expressed in this article are the personal views of
the author and are purely informative in nature.
Google- the Internet company, as the source of the search
service associated with the “Google” mark. The plaintiff in
the case argued that the public’s use of a trademark as a
verb necessarily signifies that the mark has become generic.
The court disagreed and noted as
follows:
The verb use of a trademark is not fundamentally incapable
of identifying a producer or denoting source. A mark can
be used as a verb in a discriminate sense so as to refer to
an activity with a particular product or service, e.g., “I will
PHOTOSHOP the image” could mean the act of manipulating
an image by using the trademarked Photoshop graphics
editing software developed and sold by Adobe Systems.
This discriminate mark-as-verb usage clearly performs the
statutory source-denoting function of a trademark.
The court went on to explain that a problem arises for a mark
owner only if mark-as-verb usage is indiscriminate, and the
mark becomes referentially unmoored in the public’s mind
from the mark owner’s product or service.
Avoiding the slip into the generic void
– Lessons from Godzilla
Toho Co. Ltd, the owner of Godzilla and related marks has
aggressively and continuously gone after many infringers
to protect the name ‘Godzilla’. They have ensured that
Godzilla does not become synonymous with any fire
breathing dinosaur, but remains exclusively recognized as
their Godzilla, their trademarked brand. In 1977, the rock
band Blue Oyster Cult paid an undisclosed licensing fee to
use Godzilla’s copyrighted roar in its hit song, “Godzilla.”
In 1985, Warner Bros. depicted Godzilla in a chase scene
in Tim Burton’s Pee Wee’s Big Adventure. The Hollywood
studio was sued by Toho and had to pay an undisclosed
amount. In 1991 the U.S. division of Honda Motor displayed
a Godzilla float in the Rose Parade, and paid an undisclosed
amount to settle a lawsuit. In 2001, Rawkus Entertainment
had to discontinue PharoaheMonch’s rap hit, “Simon Says,”
after Toho accused the rapper of sampling Godzilla theme
music without permission. In 2002 a wine called “Cabzilla”
whose bottle bore the label of a screeching Godzilla toting
a glass of red was forced off the market in a discreet
settlement between the owners and Toho. In 2003 Yankee
Stadium vendors were found hawking Godzilla wares and
were dealt with by the Toho brigade. In 2008 Arizona rock
band Asshole Godzilla was ordered to forfeit its internet
domain and stop using Godzilla in its name. Again in
2008, Toho filed a lawsuit against Subway for using the
Godzilla mark without permission, demanding $150,000
in compensation. The sandwich chain had depicted a giant
monster in a commercial for a Five Dollar Footlong sandwich
promotion. In 2011 Toho sued Honda for depicting a fire-
breathing monster in a commercial for the Honda Odyssey.
The monster was never mentioned by name, being seen
briefly on a video screen inside the minivan. In 2011, the
Sea Shepherd Conservation Society christened a vessel
Gojira. The Gojira was renamed MV Brigitte Bardot in May
2011 due to legal pressure from Toho.
Up till now Godzilla has faced only one defeat in a copyright
infringement suit. In 1981 a federal appeals court dismissed
a lawsuit by Toho against Sears Roebuck & Co. filed over
a line of trash bags the retailer had named “Bagzilla.”
The bag’s use of a Godzilla-esque creature represented a
“humorous caricature” and not a serious threat to Toho’s
business interests, the court ruled. The San Francisco-
based 9th U.S. Circuit Court of Appeals court ruled that
Toho’s claims of infringement and trademark dilution were
“implausible.” Sears, the court found, “means only to make
a pun.”
Yet, Godzilla continues its rampage…
The same defence was resorted to yet again by a Louisiana
brewer that produced a beer called Mechahopzilla, featuring
a giant robot lizard on the can that perhaps too closely
resembled Godzilla’s mechanized rival Mechagodzilla.
However, this time the dinosaur was unbeatable. The brewer
succumbed to its might and agreed upon a settlement.
For a trademark owner, one of the requirements is to
regularly and meticulously police their mark to ensure that
it does not become generic. A little laxity and the trademark
may get devalued and become hard to enforce. So don’t
rest once you have arrived at a famed trademark. It is then
that the real battle begins. The creative guys get behind the
scenes, it is up to the lawyers to chase away all those after
the brand to avoid genericization.