Genericity - brand name

Genericity – What We Can Learn About How to Name a Brand

Genericity - brand nameGenericity is a problem that no brand wants, however much people may think it must be flattering for Google that people use its brand name as a verb. Saying will ‘google’ something or that are ‘googling’ something is damaging to Google’s trademark.

Far from being flattering, this could be disastrous for the Google business.

Take Aspirin as an example.  It used to be a trademarked name for a pain reliever medicine made of acetylsalicylic acid. Now it is synonymous with that type of pain killer because Bayer lost the battle for the name to continue as a trademark in the USA, UK and France. Nevertheless, it is still a trademark in many European countries as well as in Canada.

Others have been less fortunate and have lost their trademark rights in names such as: Catseye, Escalator, Thermos, Walkman, and Hovercraft due to genericity. Many others including Hoover, Xerox, and Kleenex have gone dangerously close to losing their marks or have lost them in some jurisdictions.

What it Means to Become Generic

When a mark is generic it means the trademark becomes synonymous with all versions of that product. In other words consumers understand the name to be the name of the product itself, as opposed to a name that identifies its exclusive source.

The upshot is that such a trademark loses its distinctiveness and competitors are then freely able to attach what is a powerful name to their own products.

The trademark dies and is buried, the victim of “genericide”.

Given that the brand is often the most valuable asset of a company, if you get to the stage where you no longer have that exclusivity, the brand is effectively finished and you lose the brand equity that you had built up.

A dispute between Costco and Tiffany is mentioned in this BBC artice It arose in 2013 when Costco was selling “Tiffany” engagement rings. Tiffany objected, whereupon Costco retaliated arguing that the US jewellery company’s trademark is no longer valid because Tiffany is now a generic term for the rings in question (solitaire-style comprising a diamond mounted on a single band with six prongs).

A long drawn out battle ensued. Much was at stake because if Tiffany had lost the case the trademark for one of the world’s most famous ring settings would have effectively become worthless. As it happens Tiffany won significant damages, although the damages was reduced In August 2020.

Preventing Genericide

Once a mark becomes generic it is almost impossible for the mark to be registered again. It will be deemed to lack distinctiveness and then everyone will be able to use it.

Any brand in that situation must take steps to prevent genericity from eroding its value.

One way to do so is to use generic descriptors to clearly differentiate the trademark and the product. That is, Xerox copier or Kleenex tissues, and to ensure everyone else does likewise.

Google adopted this approach very effectively a few years back when it decided to launch new products under its name with brand extension descriptors. For example, Google News, Google Translate, Google Chrome and so on. It also rebranded two of its existing services which had previously used separate product names, Picasa and Blogger as ‘Google Photos’ and ‘Google Blogs’.

By bringing more of its products under one brand name, Google changed the approach it had taken to naming hierarchy and in doing so, taken a big step towards saving its trademark rights in its brand name.

The Take Away Lessons

While genericity only arises for large household name brands that are hugely successful, what the rest of us can take away from these cases is that choosing generic, descriptive names that say on the tin exactly what the business or product is all about, is simply the wrong approach to naming.

It never ceases to amaze me that experienced marketers who should know better, do not take on board that the purpose of a brand name is to distinguish goods or services of one undertaking from those of other undertakings. The name is not the place to communicate marketing messages.

This role of a brand name to be an identifying characteristic is to ensure consumers can make buying decisions and choose products and services in the marketplace. If consumers get confused about the source or origin of goods and services they will not be able to find the products and services they are seeking.

The name is the ultimate identifier of a brand – it is its “badge of origin” designating the goods or services you sell under that name.

I would go so far as to say that a name that is not capable of uniquely identifying your brand is not fit for purpose. An effective name is one that is distinctive. There should be no similar names on the registers.

Think of the name as the equivalent of a plot of land on which you are going to build property, except for brands it’s the property on which you are going to build the brand associations.

If you own a secure plot of land in a desirable location, the properties you build on the land will be more valuable. A similar thing happens when you build a brand.

Using a generic, descriptive name, is to use a weak name from an intellectual property perspective. It is one of the most important choices you make for your brand, so making a good choice is not just about whether you like the sound of a name, but also whether the name is a strong one from an intellectual property point of view. If it is weak then it is the equivalent of choosing a bad plot, in a poor location – one that people can easily break into, and which makes you vulnerable to theft of your market share. It will be extremely expensive to enforce your rights against competitors and you will lose some of the business that would otherwise have come to you because other businesses using similarly generic names will be confused for you. You are effectively devoting some of your marketing budget to propping up competitors!

That is why I am surprised that so many branding agencies choose names without reference to lawyers. A lawyer experienced in trademarks and brand protection brings a perspective into the naming process that is essential before finalising a name choice. A lawyer’s role goes beyond simply checking availability and registering a name.

You will have other identifiers of course, such as a logo, type of font, tagline, colours, icons and so on to play with, as well as your communications. However, the name is the anchor to which these other identifiers are attached and needs to be unique to you.

Jenni Romaniuk’s book Building Distinctive Brand Assets also distinguishes between the brand name and other identifiers because the name has an anchoring significance – distinctive brand assets call to mind the name.

Consider how you decide what to buy and how brands come into your consideration. We search our memory for something to buy for the situation we find ourselves in. Say you are thirsty and decide to buy a soft drink. If you decide you want a Coca Cola or a Pepsi, it is the name you think of first and foremost. You may remember the designs and logos, but it is primarily the name that evokes the product.

In conclusion, choose a name because you like the sound of it but there is no need to describe your offering in that name.

, advises SMEs on how to turn ideas for new business concepts, products or services into protectable IP. Building a business on strong legal and IP foundations is how you increase the value of a business. For help to create, identify, protect, and defend your business assets.

To find "How to Add Value of Your Business While Avoiding IP Disasters That Waste Time and Money"

Get our Price and IP Report

Azrights, help you succeed online by protecting your intangible assets, and resolving disputes.