At what point can a product lose trademark protection?

[Martini_Enfield]

There’s been an interesting discussion in this thread about how people in the US refer to a collection of Lego pieces as “Legos”, much to the frustration of the Lego company, who don’t want the their brand name being turned into a generic term for plastic bricks which one can assemble in a variety of creative ways for education or leisure purposes.

This is already a fate which has befallen “Thermos” and “Hoover” (amongst others), but I’ve noticed of late that the vast, vast, vast majority (probably 90%+) of customers at work refer to ALL MP3 Players as “iPods”, which makes our job quite difficult as we try to establish whether they mean the iPod made by Apple, or one of the competing MP3 players.

It wouldn’t surprise me at all if, in 10 years time, iPod had lost its trademark protection and had become the defacto name for an MP3 player… but the question is, how does a product lose its trademark protection? Is there a specific declaration that a court makes, or is it just one of those things that gradually happens?

[postcards]

According to this (PDF warning) lack of use for three of more years is considered abandonment.

There’s more to it than that, of course. Only one company makes (and advertises them as) Thermos brand vacuum bottles, only one company makes Kleenex. Only those compaies can legally call their products such. People, however, can (and will) call them (and similar items) whatever they want.

‘Hoover’, however, is most certainly a Britishism. I’ve never heard a vacuum cleaner called anything other than a vacuum cleaner. (Unless it’s one of those industrial sized wet/dry units. then, no matter who makes it, I call it a Shop-Vac.)

[Keeve]

My suggestion is to research the history of the word “aspirin”, which is still a trademark in Canada, but lost it long ago in the USA.

[Exapno_Mapcase]

You can check the Wikipedia page on Genericized trademark for more information.

If you check the List of generic and genericized trademarks you’ll see that very few trademarks have become genericized in recent years. This despite the more frequent documentable use of words as generics. One of our lawyers will have to stop in to say whether there’s been a change in the law that makes this so.

Aspirin, however, is a particularly terrible example because of the unique circumstances in which Bayer lost the trademark:

On March 6, 1899 Bayer registered it as a trademark. However, the German company lost the right to use the trademark in many countries as the Allies seized and resold its foreign assets after World War I. The right to use “Aspirin” in the United States (along with all other Bayer trademarks) was purchased from the U.S. government by Sterling Drug in 1918. Even before the patent for the drug expired in 1917, Bayer had been unable to stop competitors from copying the formula and using the name elsewhere, and so, with a flooded market, the public was unable to recognize “Aspirin” as coming from only one manufacturer. Sterling was subsequently unable to prevent “Aspirin” from being ruled a genericized trademark in a U.S. federal court in 1921. Sterling was ultimately acquired by Bayer in 1994, but this did not restore the U.S. trademark. Other countries (such as Canada and many countries in Europe) still consider “Aspirin” a protected trademark.