The trademark generification occurs when, after the protection is recognized, the trademark content loses its distinctiveness, falling into the common domain. The trademark becomes so powerful that the sign, instead of distinguishing the trademark becomes confused with the product. Xerox, Gillete and Pyrex are some obvious cases.

It occurs in two main hypotheses: due to the excess fame of the trademark, and by the excess of the uniqueness of the trademark. In general, the more famous the trademark, the more sensitive to the loss of distinctiveness due to excess of meaning.

To decrease the risk of a trademark becoming generic due to its fame, the owner of this trademark must choose an arbitrary or fancy name to designate the product, avoiding, whenever possible, the use of juxtaposition or agglutination of known affixes or words. For a greater protection of a trademark against its genification. it is prudent for a trademark to name more than one product, as it is easier to generate a trademark that identifies a single product than a brand that distinguishes one series of products.

When trademark owner become aware that their trademarks are being used by competitors in an improper manner, as referring to the trademark as being the product itself, the owner must immediately take steps to avoid improper use of the brand. Even after the eventual generification, there may be a recovery of distinctiveness, through secondary meaning.

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Source: Trademark Generification

Lawyer Author of the Comment:Laís Iamauchi de Araujo

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
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