Private Law Theory

ABSTRACT
The brand names ‘aspirin’, ‘escalator’, and ‘cellophane’, were so widely used by the public that they became a problem for their owning companies. The terms became synonymous with the product itself and were determined by courts to have become ‘generic’, losing their trademark protection and allowing anyone to use the terms. This loss of trademark protection is known as ‘genericide’. But trademarks do not ‘die’ overnight. Their ‘deaths’ are usually slow and painful, the result of a natural linguistic process known as ‘linguistic drift’. This paper seeks to view genericide from a linguistic perspective, and show how linguistic concepts and tools can be used to help business owners develop stronger marks that are less susceptible to genericide; help those business owners police against genericide; and help litigators and judges determine when genericide has truly taken place.

In Section II of this paper, we will look at genericide from both a legal and linguistics perspective, first reviewing the legal framework for making genericity determinations and then discussing linguistic principles implicated by genericide. We will then look at the evidentiary value and shortcomings of the traditional tools (dictionaries, surveys, etc.) used for determining whether genericide has taken place. In Section III, we introduce corpus linguistics – a methodology that uses electronically searchable databases of real-world texts to produce empirical evidence about the relative frequency and contextual meaning of words and phrases in a particular community – as a promising tool to supplement or replace some of the more traditional methods. In Section IV, we present two case studies, using corpus linguistics to analyze the ‘deaths’ of two trademarks that have been declared generic: escalator and trampoline. Finally, in Section V, we discuss implications of our research for litigators, business owners, and courts. We then conclude.

Heilpern, James and Brown, Earl Kjar and Smith, Zachary and Eggington, William, Going Generic: A Linguistics Approach to Genericide in Trademark Law (August 1, 2024).