Legal Strategies for Protecting Brands from Genericide: Recent Trends in Evidence Weighted in Court Cases

Abstract

Under the Lanham Act and the Trademark Revision Act of 1988, trademarks may be cancelled if it is ruled that consumers use the brand name to describe a generic category. Trademark cancellation, or “genericide,” has high stakes in that it can result in the loss of a valuable corporate asset. The authors provide an overview of the history of trademark cancellation cases and examine what types of evidence are considered in such cases. The authors provide an analysis of trends in recent court rulings and advice for avoiding genericide.

How do Firms Make-and-Buy? The Case of Legal Services Sourcing by Fortune 500 Companies

“…This will enable firms to reduce brand dilution and create stronger brand names. Increased communication between lawyers and marketers is important in this process as lawyers can identify threats to the intellectual capital of the firm that are not immediately obvious to marketing staff (Peterson et al, 1999;Taylor et al, 2002). In view of these gains, firms with high advertising intensity will rely more on their internal legal department.…”

Managing exploration in organizations: The effect of superior monitoring on subordinate search behavior

“…Marketing campaigns, for example, where managers care about how often new campaigns outperform previously successful strategies (Kitchen, Brignell, Li, & Jones, 2004). Similarly, procedural legal strategies, where lawyers focus on how often a newly developed legal strategy employed in court beats their earlier standard approach, might be another setting to which our setup maps well (Taylor & Walsh, 2002). Yet, aggregated comparisons of current with past search progresses might still be more representative of some other organizational settings.…”

Lexical interference in semantic processing of simple words: Implications for brand names

“…A new brand (e.g., Rollerblade) in a new product category (e.g., in-line skates) is in the enviable position of creating consumers' schema knowledge about the category; the brand becomes a category examplar (Nedungadi & Hutchinson, 1985). One risk in this situation is "genericide"-when the brand name becomes descriptive of the product category in the minds of the consumer and is no longer protected as a trademark that is unique to the producer (Simonson, 1994;Taylor & Walsh, 2002). Another, more pervasive risk is imitation at both the product-form and brand-name levels, and the consequent consumer confusion such me-too competition creates (Collins-Dodd & Zaichkowsky, 1999;Howard et al, 2000).…”

“…Factors that influenced brand-name processing and interference are issues for strategic brand management (Keller, 1998;Zaichkowsky, 1995) and brand protection (Simonson, 1994;Taylor & Walsh, 2002). Confusion and interference were the source of research in the word-recognition literature.…”