Zoom. In the last year, Zoom was one of the most frequently used words in our society. It is used as noun, adjective, and verb: Zooming. Zoomers, Zoom Dating, Zoom University, Zoom-bombing, Zoom Fatigue…the list goes on and on. Over the last year, most of us have used Zoom or another video conferencing platform in one way or another. We have virtually attended meetings, school, church, weddings, reunions, happy hours, yoga classes and dates. Whether we liked it or not, using Zoom became a way of life while we stayed at home during the pandemic. And, in addition to constantly being on Zoom, we have added Zoom and all Zoom-like things to our vernacular.
I am sure Zoom Video Communications, Inc., the company who owns Zoom, is thrilled with the popularity of, and our enthusiastic use of, their product. Over the last year, Zoom’s stock price is up 175%. However, not only is their product extremely popular, so is its trademark. It is hard to scroll through social media or have a conversation without seeing or hearing multiple references to Zoom-this or Zoom-that. Unfortunately, there is a downside to the popularity of Zoom’s trademark. It is called genericide.
What is genericide?
Genericide is the legal term used to refer to the death of a trademark. This death occurs because the trademark becomes so commonly used by the public that the trademark becomes synonymous with the product. If the business who owns the trademark does not fight to keep the trademark protected, the trademark can become a generic. If a trademark becomes generic, it enters the public domain and is free for all to use.
All of these generic words were once exclusive trademarks:
Aspirin
Thermos
Yo-Yo
Dry-Ice
Linoleum
Elevator
Over time, each of these trademarks transformed into the generic word for the product the trademark was associated with and was lost to genericide. In the minds of the public, the trademarks lost their distinctiveness, no longer the identifying brands they represented.
Generic words cannot be trademarks. The public would never associate a generic word to one particular company. Once a trademark becomes generic through genericide, it loses its trademark protection and becomes available to the public. Even competitors are free to refer to their products using the genericized word.
Google’s struggle with genericide
Google has had its struggle with genericide. In 2012, David Elliot filed a lawsuit against Google to cancel the Google trademark. Mr. Elliott claimed “google” had become generic because the public understood the meaning of “google” to be the act of internet searching. In the appeal of the case, the Ninth Circuit held “google” was not a generic term and was a protectable trademark. Even though Google’s trademark was widely used by the public as a verb (“googling” or “I’m going to google it”), it did not mean Google’s trademark had lost its source-identifying function. The court cited the Lanham Act as allowing trademarks to have a dual function. “A trademark can serve a dual function – that of [naming] a product while at the same time indicating its source.”
Will Zoom’s trademark succumb to genericide?
When the National Law Review looked at the question of whether Zoom is headed toward genericide, it framed the question as:
The critical question for Zoom will be whether the Zoom mark has become a mere common verb, falling within the generic mark category, and therefore becoming ineligible for ongoing trademark protection.
In its analysis of the question, the National Law Review concluded it is likely Zoom will avoid genericide. Although the public is using the word “Zoom” to refer to videoconferencing in general, the public also knows “Zoom is a particular platform, distinct from Skype, Google and so on.”
How to avoid genericide
Although Zoom will likely avoid genericide, other companies may not be so lucky. Unfortunately for a trademark owner, once a trademark becomes generic it loses its trademark protection. However, genericide does not occur overnight. It takes years before a trademark becomes generic through genericide, giving the trademark owner the opportunity to take action to protect its brand.
There are several strategies companies can use to prevent their trademarks from becoming generic.
- Add the word “brand” after your trademark
Companies should focus on educating the consumer their trademark is a brand and the source of product, not the product itself.
Example – Band-Aid Brand
- Add a descriptor after the trademark
Combining your trademark with a descriptive term or phrase protects your brand by making clear the brand name should not be used as the generic name for the product.
Example – Kleenex brand tissues and Jell-O brand gelatin
- Establish guidelines for the usage of your trademark
Never use your trademark as a verb (“xeroxing a copy”).
Never use your trademark as a noun, but always as an adjective followed by a generic noun (“Zoom videoconference” or “Zoom webinar”).
If you need to use your trademark in the plural form, make the generic noun plural not the trademark itself (“Zoom meetings”).
The Apple’s guidelines for its trademark are a great example.
If you are interested in reading more about how to protect your trademark from genericide, visit the International Trademark Association to see their best practices.
~REC
