DAMODARAM SANJIVAYYA NATIONAL LAW UNIVERSITY, VISAKHAPATNAM

INTELLECTUAL PROPERTY RIGHTS

PROJECT TOPIC- TRADEMARK: PROTECTION, RIGHTS

SUBMITTED TO : PROF. DR. ANITA RAO

SUBMITTED BY: ANMOL GIRI, 2015-010

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ACKNOWLEDGEMENT

The final outcome of this project required a lot of guidance and assistance from many
people and I am extremely privileged to have got this all along the completion of my
project. All that I have done is only due to such supervision and assistance and I would
not forget to thank them.

I respect and thank Dr. Anita rao, for providing me an opportunity to do the project
work on White Collar Crime and giving us all support and guidance which made me
complete the project duly. I am extremely thankful to her for providing such a nice
support and guidance. She took keen interest on our project work and guided us all
along, till the completion of our project work by providing all the necessary information
for developing a good system.

SIGNATURE

(FACULTY)
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CONTENTS

INTRODUCTION ......................................................................................4
RESEARCH METHODOLOGY ...............................................................6
Objectives: ..................................................................................................6
DEFINING THE TERM GENERICIDE....................................................7
THE LEGAL STANDARDS FOR DETERMINING GENERICNESS ...8
THE EVIDENTIARY REQUIREMENTS IN DETERMINING
GENERICNESS .......................................................................................14
WHAT STEPS CAN BE TAKEN ............................................................18
CONCLUSION .........................................................................................20
BIBLIOGRAPHY .....................................................................................21
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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,
2
protect the public from deceit, and guarantee product quality. 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. Competitors

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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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
holder6.

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.

OBJECTIVES:

1. To understand the concept of trademark and to analyse 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
status—which 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 Determining Genericness

The leading case concerning the cancellation of trademarks for genericness, Bayer Co.
v. United Drug Co., was written in 1921 by then district judge Learned Hand. Although
decided over fifty years ago, 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 genericness.

14
Id. As Judge Hand phrased the issue in Bayer Co. V. United Drug Co.: "[T]he questions 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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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 the good, 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 descriptive of the
20
product, could be afforded trademark protection under the doctrine of secondary

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.
20
The Court of Appeals for the District of Columbia affirmed the Commissioner of Patents'
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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 infringement. In light of
more recent cases, it seems clear that "genericness" and "secondary meaning" represent

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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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 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

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 non-purchasing 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.4d
26
Bayer Co. V. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
 P a g e | 13

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
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

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).
 P a g e | 14

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 Determinations

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
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

30
Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977), cert.
 P a g e | 15

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.32The meaning of a term also frequently shifts over time and through
usage, yet indirect analysis does not account for such changes. Moreover, the special

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.
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).
 P a g e | 16

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 consumers33 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
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

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).
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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
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

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).
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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).

In general, the function of a trademark is to distinguish goods and services in the

marketplace from other companies—not 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
media—print as well as electronic.
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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 ™
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

35
https://www.legalzoom.com/articles/the-problem-of-genericide-in-trademarks
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Always accompany the Trade Mark with a product description

e.g. Wear LEVI’S jeans

Eat KELLOGG’S 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.

CONCLUSION
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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.

BIBLIOGRAPHY
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 BOOKS REFERED
 Salmond and Hauston’s Law of Torts, 18th Ed.
 Halsbury’s Laws of England, 4th 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, 6th Edition, Eastern Law
House.

 ELECTRONIC SOURCE OF DATA

 www.manupatra.com
 www.westlaw.com
 www.indiankanoon.org
 www.legallyindia.com