So big they failed… How trademarks become generic

by McAfee & Taft

McAfee & Taft

Most of us understand that a trademark is the brand name for a product: Oreo® sandwich cookies, Kleenex® tissue, Velcro® fasteners. But what happens when one brand name becomes so ubiquitous and so closely identified with a particular product that we can’t think of anything else to call it? We sneeze and ask for a Kleenex®, demand a BandAid® for a cut, or try to persuade our tying-challenged preschooler that the shoes with Velcro® are a way better choice for the day.

All of these examples started out as “strong” on the trademark spectrum, which looks like this:

Usually it is iconic or novel products that dominate the marketplace that become victims of their own success. Sometimes the brand owner can’t stem the tide, and the mark winds up in the trademark graveyard, buried between ESCALATOR and ASPIRIN. So if you’re a brand owner who’s invested a lot in your brand, what can you do to protect against such a fate?

  • Notice letters: This strategy, where you send a letter to a trade publication or an individual to correct their usage, can be delicate. Too heavy-handed and you risk losing a fan of the brand or looking like a trademark bully. A light touch may win more cooperation and may be effective in early stages.  
  • Collaborative information sources: Keep a close eye on web resources like WIKIPEDIA®. Most people know better than to believe everything they see on the web, as it allows entry of information from users, but don’t assume that. A recent entry indicated that because a patent on a certain product had expired, its trademark was now “generic” and available for use, which isn’t true. Correct public perceptions when you have the opportunity.  
  • Lead by example: Make sure your own advertisements use both your brand and the generic product name (e.g. KLEENEX® facial tissues, SKYCAM® aerial camera systems.) Don’t abbreviate or alter your marks, and be sure you use the right symbol (®, TM, SM) in displaying the marks. Courts give great weight to evidence of descriptive use of a mark by a trademark owner in considering if the mark has become generic.  
  • Brand awareness campaigns: The XEROX® Corporation used to use magazine ads to implore us to make photocopies, not “Xeroxes.” Now, some brand owners have gotten a lot more creative, using our digital culture to fight genericism, like the very clever VELCRO® video on YouTube® that reminds viewers that the generic term is “hook and loop.” In today’s social media-sharing culture, humor can be a useful tool to propel your message.

If you are (un)lucky enough to have what VELCRO’s lawyers call the “first world problem” of having a trademark that everyone wants to use, it will probably take some combination of these strategies to protect it. If you treat your marks like they are important, others are more likely to follow suit.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McAfee & Taft | Attorney Advertising

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