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59-657: In many languages, the word "vaseline" is used as generic for petroleum jelly; in Portugal , the Unilever products are called Vasenol. In 1859, Robert Chesebrough , a chemist who formerly clarified kerosene from the oil of sperm whales , traveled to the oil fields in Titusville, Pennsylvania to research what new materials might be created from this new fuel. There he learned of a residue called rod wax that had to be periodically removed from oil rig pumps. The oil workers had been using

118-417: A 'secondary meaning', such that the mark is so distinctive that people associated it with specific brand name in the marketplace . A generic term is the common name for the products or services in connection with which it is used, such as "salt" when used in connection with sodium chloride. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of

177-422: A badge of origin. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while unregistered trademark rights may be enforced pursuant to the common law tort of passing off . Trademark rights generally arise out of the use and/or registration (see below) of a mark in connection only with

236-419: A business from the products or services of other businesses, and therefore cannot be afforded any legal protection. This is because there has to be some term which may generally be used by anyone—including other manufacturers—to refer to a product without using some organization's proprietary trademark. Marks which become generic after losing distinctive character are known as generic trademarks . Marks which are

295-458: A common name for the product or service rather than an indication of source). Among distinctive trademarks the scale goes from strong to weak: Generic term Trademark distinctiveness is an important concept in the law governing trademarks and service marks . A trademark may be eligible for registration, or registrable , if it performs the essential trademark function, and has distinctive character . Registrability can be understood as

354-409: A continuum, with "inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive character at the other end, and "suggestive" and "arbitrary" marks lying between these two points. "Descriptive" marks must acquire distinctiveness through secondary meaning—consumers have come to recognize the mark as a source indicator—to be protectable. "Generic" terms are used to refer to

413-547: A generic name as soon as a novel pharmaceutical enters the market. For example, aripiprazole , the nonproprietary name for Abilify, was well-documented since its invention. Warfarin , originally introduced as a rat poison , was approved for human use under the brand name Coumadin. Examples of genericization before the modern system of generic drugs include aspirin , introduced to the market in 1897, and heroin , introduced in 1898. Both were originally trademarks of Bayer AG . However, U.S. court rulings in 1918 and 1921 found

472-473: A generic term for the product to be used in descriptive contexts, to avoid inappropriate use of the "house" mark. Such a term is called a generic descriptor and is frequently used immediately after the trademark to provide a description of the product or service. For example, " Kleenex tissues" ("facial tissues" being the generic descriptor) or " Velcro -brand fasteners" for Velcro brand name hook-and-loop fasteners. Another common practice among trademark owners

531-422: A geographical indication for specialty food or drink may be generic, it is not a trademark because it does not serve to identify exclusively a specific commercial enterprise and therefore cannot constitute a genericized trademark. The extension of protection for geographical indications is somewhat controversial. A geographical indication may have been registered as a trademark elsewhere; for example, if "Parma Ham"

590-419: A lack of alternative names in common use: as a result, consumers may not realize that the term is a brand name rather than a medical eponym or generic term. Pharmaceutical trade names are somewhat protected from genericization due to the modern practice of assigning nonproprietary names based on a drug's chemical structure. This circumvents the problem of a trademarked name entering common use by providing

649-516: A misspelling of a generic term (e.g., the elimination of a space) do not change the generic significance of the term. Aspirin tablet is a registered trademark by Bayer AG. Aspirin is a generic word in the United States for the pain reliever acetylsalicylic acid (also known as ASA). Another example is the term " cyberpunk ", which in the United States is a registered trademark by R. Talsorian Games Inc. for its tabletop role-playing game and within

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708-483: A result of common use in the marketplace 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 . One risk factor that may lead to genericization

767-406: A specific type or range of products or services. Although it may sometimes be possible to take legal action to prevent the use of a mark in relation to products or services outside this range (e.g. for passing off), this does not mean that trademark law prevents the use of that mark by the general public. A common word, phrase, or other sign can only be removed from the public domain to the extent that

826-484: A suggestive mark are Blu-ray , a new technology of high-capacity data storage that utilizes a "blue" (actually violet ) laser and Airbus , an aerospace corporation manufacturing commercial aircraft. A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. An example might be Salty used in connection with saltine crackers or anchovies. Such terms are not registrable unless it attains

885-469: A trademark owner is able to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections. For a case study in both concepts, see Apple Corps v Apple Computer . If a court rules that a trademark has become " generic " through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it),

944-402: A trademark owner may need to take aggressive measures to retain exclusive rights to the trademark. Xerox Corporation attempted to prevent the genericization of its core trademark through an extensive public relations campaign advising consumers to " photocopy " instead of "xerox" documents. The Lego Company has worked to prevent the genericization of its plastic building blocks following

1003-439: Is a trademark or brand name that, because of its popularity or significance, has become the generic term for, or synonymous with, a general class of products or services , usually against the intentions of the trademark's owner. A trademark is prone to genericization, or "genericide", when a brand name acquires substantial market dominance or mind share , becoming so widely used for similar products or services that it

1062-608: Is common. For example, Adobe sent e-mails to many web authors using the term " photoshopped " telling them that they should only use the term "modified by Adobe® Photoshop® software." Xerox has also purchased print advertisements declaring that "you cannot 'xerox' a document, but you can copy it on a Xerox Brand copying on machine." Another popular example is the use of the word " frappuccino " by Starbucks customers to mean any blended coffee beverage, though employees are instructed to only say "frappuccino blended coffee" or "frappuccino blended cream" when referring to such drinks. This rule

1121-475: Is intended for external use only, and is not recommended for deep skin cuts or punctures, animal bites, or serious burns. Topical petrolatum products like Vaseline are used to manage and relieve atopic dermatitis and eczema in adults. Vaseline contains mineral oils . Unrefined mineral oils often contain adulterants including polycyclic aromatic hydrocarbons (PAHs), which can increase risk for certain forms of cancer when consumed orally. When used topically (as

1180-417: Is no longer associated with the trademark owner, e.g., linoleum , bubble wrap , thermos , taser . A trademark thus popularized is at risk of being challenged or revoked, unless the trademark owner works sufficiently to correct and prevent such broad use. Trademark owners can inadvertently contribute to genericization by failing to provide an alternative generic name for their product or service or using

1239-625: Is no longer possible to legally enforce rights in relation to the mark, the mark may have become generic. In many legal systems (e.g., in the United States but not in Germany ) a generic mark forms part of the public domain and can be commercially exploited by anyone. Nevertheless, there exists the possibility of a trademark becoming a revocable generic term in German (and European) trademark law. The process by which trademark rights are diminished or lost as

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1298-407: Is not hard-and-fast, however; for example, Lexis-Nexis has a U.S. trademark registration for "Shepardize," Reg. No. 1743711 , and defines "Shepardizing on a web page as "the process of looking up citations" in "a series of books called Shepard's Citations." Such efforts may or may not be successful in preventing genericism in the long run, which depends less on the mark owner's efforts and more on how

1357-446: Is not recommended for internal use. It can also be used as a moisture insulator for local skin conditions characterized by dry skin, such as atopic dermatitis and eczema . As a petrolatum product, Vaseline is used as a topical moisturizer which assists with skin water retention by acting as an occlusive agent that prevents evaporation of water from the stratum corneum (outermost skin layer) and seals out external water. Vaseline

1416-406: Is recommended with Vaseline), dermal absorption of PAHs is insignificant. No link between topical petroleum jelly-based moisturizers and cancer has been found in large studies over many years. White petrolatum , the ingredient in petroleum jelly Vaseline, is refined from petroleum . Generic trademark A generic trademark , also known as a genericized trademark or proprietary eponym ,

1475-539: Is said by the manufacturer to be derived from German Wasser "water" + Greek έλαιον ( elaion ) "oil". Vaseline was made by the Chesebrough Manufacturing Company until the company, which merged with Pond's in 1955, was purchased by Unilever in 1987. Vaseline can be used as a lubricant for metallic and plastic surfaces. Vaseline should never be used as a sexual lubricant , as it may introduce infection-causing bacteria, damage latex condoms, and

1534-418: Is the use of a trademark as a verb , plural or possessive , unless the mark itself is possessive or plural (e.g., "Friendly's" restaurants). However, in highly inflected languages, a tradename may have to carry case endings in usage. An example is Finnish , where " Microsoftin " is the genitive case and " Facebookista " is the elative case . Generic use of a trademark presents an inherent risk to

1593-405: Is to follow their trademark with the word brand to help define the word as a trademark. Johnson & Johnson changed the lyrics of their Band-Aid television commercial jingle from, "I am stuck on Band-Aids, 'cause Band-Aid's stuck on me" to "I am stuck on Band-Aid brand , 'cause Band-Aid's stuck on me." Google has gone to lengths to prevent this process, discouraging publications from using

1652-535: Is usually a common word which is used in a meaningless context (e.g. " Apple " for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if used in connection with e.g. telephones such as in Salty Telephones , as

1711-553: Is why companies try hard not to let their trademark become too common, a phenomenon that could otherwise be considered a successful move since it would mean that the company gained an exceptional recognition. An example of trademark erosion is the verb "to hoover" (used with the meaning of "vacuum cleaning"), which originated from the Hoover company brand name. Nintendo is an example of a brand that successfully fought trademark erosion, having managed to replace excessive use of its name with

1770-470: The USPTO checks and confirms whether the request for incontestability meets formality requirements, but whether a registration is incontestable at law can only be determined during legal proceedings involving the registration. The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as

1829-470: The United Kingdom , and the common law jurisdiction of the United States (which also uses the term secondary meaning ). In the U.S., if a trademark has been used for a continuous period of at least five years after the date of registration, the right to use the mark and the registration may become "incontestable" (e.g. invulnerable to cancellation for non-use, but not for becoming generic ). In such cases

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1888-650: The public domain for use by anyone. For example, a generic term such as "apple", or descriptive terms such as "red" or "juicy" could not be registered in relation to apples. Primary consideration in the selection and use of trademarks should be given to marks which are inherently distinctive, as they possess the strongest distinctive character and do not require evidence of use to establish acquired distinctiveness. A fanciful, arbitrary, or suggestive term can be inherently distinctive and registrable without proof of acquired distinctiveness. Although these categories are most easily applied in relation to trademarks comprising words,

1947-551: The 1990s, the Parma consortium successfully sued the Asda supermarket chain to prevent it using the description "Parma ham" on prosciutto produced in Parma but sliced outside the Parma region. The European Court ruled that pre-packaged ham must be produced, sliced, and packaged in Parma in order to be labeled for sale as "Parma ham". A trademark is said to fall somewhere along a scale from being " distinctive " to "generic" (used primarily as

2006-559: The European Union by CD Projekt SA for "games and online gaming services" (particularly for the video game adaptation of the former ) and by Sony Music for use outside games. Trademark right is generally country specific. Thus, a mark that become generic in one country, such as the example of Aspirin, can still be used and recognized as a trademark in another country. In trademark litigation, courts are most frequently asked to distinguish between suggestive and descriptive marks on

2065-463: The Internet". The Swedish Language Council received a complaint from Google for its inclusion of ogooglebar (meaning 'ungoogleable') on its list of new Swedish words from 2012. The Language Council chose to remove the word to avoid a legal process, but in return wrote that "[w]e decide together which words should be and how they are defined, used and spelled". Where a trademark is used generically,

2124-525: The US as the " Abercrombie classification" or "Abercrombie factors": A fanciful / inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or "fanciful" sign. For example, " Kodak " had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary . An arbitrary trademark

2183-576: The United States continue to use "Legos" as the plural form of "Lego," but competing and interchangeable products, such as those manufactured by Mega Brands , are often referred to simply as building blocks or construction blocks. The company has successfully put legal pressure on the Swedish Academy and the Institute for Language and Folklore to remove the noun lego from their dictionaries. Adobe Inc. has experienced mixed success with preventing

2242-576: The corresponding registration may also be ruled invalid. For example, the Bayer company's trademark " Aspirin " has been ruled generic in the United States, so other companies may use that name for acetylsalicylic acid as well (although it is still a trademark in Canada ). Xerox for photocopiers and Band-Aid for adhesive bandages are both trademarks which are at risk of losing their trademark status by becoming declared generic in certain countries, something that

2301-453: The distinctive character of a term is closely related to the products or services in relation to which the term is used. A general method for assessing the distinctive character of a mark is to consider a consumer's reaction to a mark. The mark may only be inherently registrable if the consumer has never encountered the mark before. On the other hand, the mark is unlikely to be inherently registrable if it informs him about any characteristic of

2360-445: The effective enforcement of trademark rights and may ultimately lead to genericization. Trademark owners may take various steps to reduce the risk, including educating businesses and consumers on appropriate trademark use, avoiding use of their marks in a generic manner, and systematically and effectively enforcing their trademark rights. If a trademark is associated with a new invention , the trademark owner may also consider developing

2419-543: The expiration of Lego's last major patents in 1978. Lego manuals and catalogs throughout the 1980s included a message imploring customers to preserve the brand name by "referring to [their] bricks as 'LEGO Bricks or Toys', and not just 'LEGOS'." In the early 2000s, the company acquired the Legos.com URL in order to redirect customers to the Lego.com website and deliver a similar message. Despite these efforts, many children and adults in

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2478-536: The genericization of their trademarked software, Adobe Photoshop . This is shown via recurring use of "photoshop" as a noun, verb, or general adjective for all photo manipulation throughout the Internet and mass media. Since 2003, the European Union has actively sought to restrict the use of geographical indications by third parties outside the EU by enforcing laws regarding " protected designation of origin ". Although

2537-600: The grounds that the word Houston is merely descriptive. However, they might have better luck with the name "North Pole ice cream". In the latter case, although North Pole is a geographical location, the ice cream is not actually made at the North Pole , and no reasonable person would assume that the phrase North Pole is literally descriptive. Therefore marks that identify or describe a product or service, or that are in common use, or that are used as geographical indications , generally cannot be registered as trademarks, and remain in

2596-438: The mark may be accepted for registration on the basis of acquired distinctiveness . The nature and extent of acceptable evidence of use varies between jurisdictions, although the most useful evidence usually includes sales figures, details of advertising and promotional expenditure, and examples of promotional material. Consumer surveys may also help establish that consumers chiefly associate an otherwise non-distinctive mark with

2655-411: The marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade mark office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact , then

2714-408: The one hand, and between descriptive and generic marks on the other. This is because suggestive marks, like fanciful and arbitrary marks, are presumed to be entitled to trademark protection, while descriptive marks are entitled to protection if they have become known as representing the producer of the goods, and generic marks can never receive protection. It can be seen from the examples above that

2773-432: The product or service itself and cannot be used as trademarks. In United States trademark law , Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir. 1976) established the spectrum of trademark distinctiveness in the US, breaking trademarks into classes which are accorded differing degrees of protection. Courts often speak of marks falling along the following " spectrum of distinctiveness ," also known within

2832-431: The relevant products or services (e.g. whether they are delicious, large, spicy, black, or sweet, in the case of fruit). In any other case the mark may not be registrable. Another example of a descriptive mark would be a geographical word or phrase that merely indicates the origin of the product or service. For example, Houston based ice cream might find that the name "Houston ice cream" is denied trademark protection on

2891-456: The respective trademark owners actively seek to prevent. In order to prevent marks becoming generic, trademark owners often contact those who appear to be using the trademark incorrectly, from web page authors to dictionary editors, and request that they cease the improper usage. The proper use of a trademark means using the mark as an adjective , not as a noun or a verb , though for certain trademarks, use as nouns and, less commonly, verbs

2950-463: The same general principles are applied in relation to all kinds of trademarks. For example, a pine tree shape is descriptive when used on pine-scented products. A trademark with no distinctive character (i.e. a mark which is not inherently distinctive) is prima facie unregistrable. However, most jurisdictions may still allow such marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use , that consumers in

3009-452: The substance to heal cuts and burns. Chesebrough took samples of the rod wax back to Brooklyn , extracted the usable petroleum jelly, and began manufacturing a medicinal product he called Vaseline. The first known reference to the name Vaseline was by Chesebrough in his U.S. patent (U.S. Patent 127,568) in 1872. "I, Robert Chesebrough, have invented a new and useful product from petroleum which I have named Vaseline..." The name "vaseline"

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3068-439: The term genericization refers to the process of a brand drug losing market exclusivity to generics. Trademark erosion , or genericization , is a special case of antonomasia related to trademarks . It happens when a trademark becomes so common that it starts being used as a common name and the original company has failed to prevent such use. Once it has become an appellative, the word cannot be registered any more; this

3127-437: The term " game console ", at that time a neologism . Whether or not a mark is popularly identified as genericized, the owner of the mark may still be able to enforce the proprietary rights that attach to the use or registration of the mark, as long as the mark continues to exclusively identify the owner as the commercial origin of the applicable products or services. If the mark does not perform this essential function and it

3186-411: The term " salt " has no particular connection with such products. A suggestive mark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination. Examples of

3245-623: The term ' googling ' in reference to Web searches. In 2006, both the Oxford English Dictionary and the Merriam Webster Collegiate Dictionary struck a balance between acknowledging widespread use of the verb coinage and preserving the particular search engine's association with the coinage, defining google (all lower case, with - le ending) as a verb meaning "use the Google search engine to obtain information on

3304-515: The terms to be genericized, stating the company's failure to reinforce the brand's connection with their product as the reason. A different sense of the word genericized in the pharmaceutical industry refers to products whose patent protection has expired. For example, Lipitor was genericized in the U.S. when the first competing generic version was approved by the FDA in November 2011. In this same context,

3363-931: The trademark in similar fashion to generic terms . In one example, the Otis Elevator Company 's trademark of the word " escalator " was cancelled following a petition from Toledo -based Haughton Elevator Company . In rejecting an appeal from Otis, an examiner from the United States Patent and Trademark Office cited the company's own use of the term "escalator" alongside the generic term " elevator " in multiple advertisements without any trademark significance. Therefore, trademark owners go to extensive lengths to avoid genericization and trademark erosion. Genericization may be specific to certain professions and other subpopulations. For example, Luer-Lok (Luer lock) , Phoroptor (phoropter) , and Port-a-Cath (portacath) have genericized mind share among physicians due to

3422-448: The trademark owner and its products or services. Generally, evidence of use may only be acceptable or relevant if it covers a certain period of time (e.g. three years prior to the filing date of the trademark application) and originates from within the jurisdiction where registration is sought. The terminology of acquired distinctiveness is accepted in the European Union and Commonwealth jurisdictions such as Australia , Hong Kong and

3481-599: Was part of a trademark registered in Canada by a Canadian manufacturer, then ham manufacturers in Parma , Italy, might be unable to use this name in Canada. Wines (such as Bordeaux , Port and Champagne ), cheeses (such as Roquefort , Parmesan , Gouda , and Feta ), Pisco liquor, and Scotch whisky are examples of geographical indications. Compare Russian use of "Шампанское" (= Shampanskoye) for champagne -type wine made in Russia. In

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