"Change you can Xerox." Names you can Google. Can a brand’s own success really spell its doom? Yes, if the company fails to properly monitor and control how its trademark is used.

It’s called genericide and it happens when a product or service has become so dominant in the market and in customers’ mindsets that its trademark or brand name becomes the colloquial or generic description for a particular class of product or service. Unless a company works sufficiently to prevent such broad use of its trademark, its intellectual property rights in the trademark could be lost.

Have you taken your aspirin? Ridden an escalator? Drank coke…from a thermos? Thrown a frisbee? Eaten jell-o? Jumped on a trampoline? Rollerbladed in summer? Used Q-tips, band aid or scotch tape? Each of these items are actually registered trademarks to be used, in theory, only with the owner’s permission. But things have gone downhill and the latest proof can be found in the US’ s 2008 election primaries when Hillary Clinton used the phrase, “Change you can Xerox” when accusing Barack Obama of alleged plagiarism.

Xerox has waged a successful campaign to prevent the genericide of its core trademark, urging consumers to “photocopy, “ and not “Xerox,” their documents. Should the company consider Mrs. Clinton’s remarks an unintended endorsement and free advertising – or is it back to the drawing board for another stab at genericide-prevention efforts?

Another genericide victim, Aspirin, is a registered trademark of Bayer AG in most of the world, but the generic word in the United States for the pain reliever acetylsalicylic acid (also known as ASA). Because trademark rights are generally country-specific, a mark that has become generic in one country might still function and be recognized as a trademark in another.

In genericide proceedings in the U.S. involving Aspirin, the court held that if the common consumer perceived the word representing the brand name to stand for a category of products and not the particular product, then the brand name was generic in spite of the advertiser's efforts to clear confusion.

Today, one of the most dominant brands is Google, king of the Internet search arena. The goodwill and universal recognition vested in its trademarked name have made that trademark one of Google’s most valuable assets. As a result, Google aggressively protects it from a wide range of threats, including and specially, genericide.  With plenty of lessons learned from past genericide victims (see list above), Google knows that the worst thing it can do is to do nothing. To avoid expanding the use of Google to arenas other than source identification (and potential genericide), the company has taken several steps. The most famous: a cease-and-desist letter the creator of the Word Spy website (an online dictionary), insisting that Word Spy clarify its “Google” entry to emphasize that it refers to an internet search using Google’s search engine, rather than just internet searches in general.

An adman’s dream, an IP professional’s nightmare? In an article by Dominic Farnsworth that first appeared in IP Review, the conventional IP wisdom that genericide is tantamount to a trademark’s demise, though, is not shared by many brand owners who actually try to imprint their brand names as far as possible into their consumers’ psyches. Is this risky brand protection behavior?

According to the author, “In certain situations, the dangers of genericide are inherently high. Trademarks at greatest risk are those that relate to patented inventions, where the proprietor has enjoyed a period of monopoly during the life of the patent. That is to say when the trademark alone has been associated with the invention. In these situations, there is a real risk that the public will over identify the trademark with the invention in question.”

But in many situations, some brand owners seem willing to court genericide risk (and consequent loss of copyright protection) if the price is getting their brand name into the common lexicon. Some are going as far as “taking an informed strategic decision to choose a particular trademark because the public is likely to adopt it in a colloquial way.”

Is there a middle ground? The traditional anti-generic approach is of course still valid, particularly in patent-related circumstances. Businesses must still obtain trademark registrations wherever possible. Brand owners who want to creatively increase brand recognition and value at the risk of genericide must look to additional areas of law – including design rights, copyright, unfair competition laws, among others – to strengthen their IP arsenal.

At least, until the tension between brand distinction and brand oblivion eases up.