There is an old expression: “Hung by the tongue,” meaning something is said that one lives to regret. When it comes to trademark use, this saying is particularly true. Trademark owners are required to monitor trademark use, including monitoring use of the mark by third parties.
"If you have to sue someone for poaching your brand, it’s your dirty laundry that could cause you to be “hung by the tongue.”
No brand owner has done more to exemplify teaching the public about proper use of its trademarks than Xerox Corp. Xerox is famous for its enlisting the public to help monitor trademark use, by its many ads asking the public to help it prevent its mark from falling victim to genericide.
Consider the following types of evidence an opponent will trot out to prove your brand name has become generic and thus free for all to use.
Competitors’ Use. Monitor trademark use by competitors. Use of your mark as a generic term without your objection is admissible as evidence of acquiescence and loss of rights.
Your Own Use. If you have been using your trademark as a generic name, your opponent can use this evidence to prove “genericide.” You may be surprised to learn brand counsel spends a lot of time counseling clients to mind their own brand names. Monitor trademark use on websites.
Dictionary Definitions. Dictionary definitions are persuasive and you should monitor trademark use in dictionaries. For example, if an online source is mistakenly using your mark in a generic sense, politely let the site owner know! If Wikipedia has it wrong, promptly correct it by editing the page.
Naked Licensing. Monitor trademark use by affiliates. A brand owner who allows distributors or licensees to use a mark with no written license or guidelines governing use is at risk. I have represented a number of clients who provide training and certification in the life improvement. Allowing graduates to use the brand name without a written agreement is almost certain to lead to claims that the mark has become descriptive. Trademark examiners routinely perform Internet searches of a mark seeking federal protection. When there are multiple users of the applicant’s mark displayed in search engine results (other than the applicant), a rejection on the grounds that the mark is descriptive or generic is almost certain to ensue.
Media Use. If a mark is used incorrectly in the media, nicely advise the source of the proper use.
Take the case of the mark REALTOR mark which survived a challenge it had become generic. The case is a textbook case of how to hold that tongue! NAR can teach you how to monitor trademark use. In 2004, the National Association of Realtors (NAR) faced a challenge for its REALTOR® mark, a mark used to signify membership in its trade association. The mark was alleged to be generic, i.e. it had become a common term to for real estate brokers. Who hasn’t said or heard someone say, “Who is your realtor?” Yet, the NAR successfully defended against the challenge, primarily because its efforts to educate the public persuaded the court the mark had not become generic. The court noted:
Respondent issues guidance containing specific rules for use of the REALTOR® marks and name. This guidance outlines limitations on the use of the REALTOR marks and logo and provides graphic representations of correct and incorrect uses of the logo, in print, in advertisements and on the Internet. For the benefit of its member associations and individual agents and brokers, its web pages contain “Graphics Standards and Style Guidelines.”
This says it all. Treat your own brand names with the respect they deserve. Teach others to do the same. Someday, you may wish you had—or like the REALTORS, be happy you did.