By: Tom Fawkes
“I still find it amusing how Tivo’s lawyers get [angry] when you use their name as a verb. (A couple of years ago, I got a nasty note from them for doing it, and it pretty much happens all the time.) The fear is that the general public will just think of “Tivo” as a general digital video recorder, rather than a brand name, like what happened to Xerox and Kleenex. I don’t have a Tivo, but man, I Tivo all the time!”
In 1997, TiVo Inc. was formed to market a revolutionary technology that would have a significant impact on people’s television viewing habits: the TiVo® digital video recorder. 2 Through successful marketing, the “TiVo” product name became part of the social consciousness. 3 When many people think about digital video recorders (DVRs), they think of the “TiVo” name. A dream scenario for any entrepreneur, right? Wrong. If TiVo fails to protect its trademark, courts could declare that the TiVo brand name has become sufficiently generic to result in a loss of rights. Such a result could be disastrous to TiVo Inc.—competition would be very difficult in a market where every competing DVR could call themselves a “TiVo,”4
Losing trademark rights due to the fact that a product or service no longer distinguishes itself from its competitors in the public consciousness is known as “genericide.” 5 Genericide is a risk often faced by companies that are the initial player in a new market. 6 It occurs when “a trade-mark ceases to identify in the public’s mind the particular source of a product or service but rather identifies a class of product or service, regardless of the source….” 7 Crucially, once a mark has been genericized and entered the public domain, no amount of enforcement litigation can ever bring it back. 8 Classic examples of genericide include “aspirin” and “escalator.” 9
Whether or not a product or service name has become sufficiently generic to become part of the public domain is a question of fact. 10 To determine this, courts use the “primary significance test” formed by Judge Learned Hand; the test asks what the primary significance of the trademark is in relation to the general public11 Hand explained this test when considering the genericide of Aspirin, stating that “[i]f [the general public] understand it only by the kind of goods sold, then. . . it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed. . . .” 12 What was once Aspirin TM, a registered trademark of Bayer Corporation, became aspirin, a common type of pain killer produced by several drug manufacturers. 13
Companies must therefore realize that having a valid trademark on a product isn’t enough to protect their intellectual property rights. They must actively enforce them. Under the doctrine of laches, effective enforcement of trademarks will be prevented if the owner waits unreasonably long to take action after learning about an infringement. 14 Careful denotation using either the TM (if the mark hasn’t been formally registered under the Lanham Act) or ® (if it has been formally registered under the Lanham Act) symbols whenever the mark in question is displayed is also an important step for anyone attempting to prevent genericide. 15
Genericide is raised as a defense in trademark infringement cases. At trial, a respondent attempting to prove genericide must present evidence that a mark’s primary significance to the relevant public is to all products in that field, and not only to the plaintiff’s particular product. 16 A consumer survey or evidence that the trademark holder in question has allowed its mark to become public domain can be used to successfully prove this. 17
As the initial entity in the digital video recorder market, TiVo Inc. then faces the risk of losing a valuable intellectual property right in its product. In popular culture, the term “TiVo” has often become synonymous with any digital video recording equipment, regardless of brand name. Much like Xerox Corporation, TiVo Inc. faces the risk of its trademark name being turned into a verb—people aren’t “digitally recording” their favorite shows, they’re “TiVoing” them, regardless of what brand of DVR they actually own. A simple Google search reveals this trend: over 40,000 hits for “Tivoing,” over 38,000 hits for “Tivoed,” and over 98,000 hits for “Tivo’d.” 18
With major cable companies and satellite providers developing their own DVRs19, the need for TiVo Inc. to differentiate itself from its competitors and protect its trademarks is paramount. In response, TiVo Inc. has taken several important steps. The company has sent out letters to various news outlets encouraging them to use the “TiVo” name as an adjective followed by the descriptive noun, “digital video recorder,” instead of as a verb or a noun itself. 20 Furthermore, a section of their corporate website is dedicated to ensure that all employees protect their trademarks in any communications to the public. 21
Will this be enough? At this time it’s difficult to say. It’s possible that the growth of the DVR market will make consumers more aware of the differences between TiVo® DVR and other digital video recorders. 22 However, further ad campaigns, and perhaps even some high-profile litigation, by the company could be necessary to fight off genericide. 23
Ultimately, TiVo Inc. faces the difficult conundrum of marketing its product so that the name is popular in the minds of consumers, but not TOO popular. In the Internet Age, the problem could be even more difficult. As information becomes more decentralized, the possible sources of communications leading to genericidal issues expands exponentially. 24 In many ways, the cat has been let out of the bag when it comes to using the “TiVo” brand name to apply to all digital video recorders. TiVo Inc. then faces an uphill climb to protect its registered trademarks and to prevent itself from becoming a victim of genericide.
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1 Will Leitch, The Playoff Buzzsaw That is the Arizona Cardinals, DEADSPIN.COM
2 About TiVo Inc.
3 See, e.g., Angela Hom, TiVo and Trademark “Genericide,” 52 RISK MGMT. 9, 9 (2005) (Asserting that the TiVo ® digital video recorder had become “a true part of pop culture)[hereinafter Risk Management].
4 See Funeral for a Brand: How Trademarks Become Generic
5 BLACKS LAW DICTIONARY 550 (7th ed. 2000).
6 See Risk Management, supra note 3.
7 Francis Amendola et al., Generic meaning acquired through use, 87 C.J.S. TRADE-MARKS, ETC. § 225 (2008).
8 E.g., Illinois High School Ass’n v. GTE Vantage Inc., 99 F.3d 244, 247 (C.A.7 1996) (noting “[a] trademark owner is not allowed to withdraw from the public domain a name that the public is using to denote someone else’s good or service, leaving that someone and his customers speechless.”)
9 See, e.g., Sung In, Death of a Trademark: Genericide in the Digital Age, 21 REV. LITIG. 159, 159 (2002) [hereinafter Sung].
10 See id. at 163.
11 Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921).
12 Id.
13 See id.
14 See B. Brett Heavner & Marcus H. H. Luepke, Trademark Pitfalls in the “Land of the Unlimited Possibilities”: The Top 15 Mistakes of Foreign Applicants in the U.S. Trademark Office, 98 TRADEMARK REP. 974, 995 (2008).
15 See, e.g., Sung, supra note 9, at 173.
16 See Glover v. Ampak Inc., 74 F.3d 57, 59 (4th Cir. 1996).
17 See id.
18 Google Search Results
19 See, e.g., John P. Mello Jr., DVR Market Penetration: Riding a Provider Powered Wave, TECH NEWS WORLD, Sep. 26, 2007
20 See Risk Management, supra note 3.
21 TiVo Inc. Legal & Trademark Requirements, http://www.tivo.com/abouttivo/resourcecenter/legalandcopyrightrequirements/legal_trademark.html (last visited Jan. 31, 2009).
22 As evidence of this, note that a Google search for “DVR’d” produces over 399,000 hits.
23 See, e.g., Sung, supra note 9, at 173-74.
24 See id. at 178.
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