Brand Owners Beware: Don’t Let Your Trademark Become Genericized

Escalator, Zipper, Yo-Yo, Trampoline, Aerobics, Kerosene, Nylon, Thermos, Q-Tip, Videotape, Dry ice, Pilates – Which of the following were registered trademarks?  Think about it, the answer will be revealed a little later…

So what’s in a name, anyway?   For many trademark owners it’s their most important asset.  Goods are most easily identified by a trademark and brand owners count on their customers being able to identify with the trademark for repeat business.  A trademark holds a company’s reputation behind it.

When you hear the names GUCCI, VERSACE, PRADA you automatically associate these names with quality, wealth and beauty.  When you hear the name, Christian Louboutin, one can’t help but to think about that beautifully crafted shoe with the famous red sole.  Consumers that are able to afford these goods will tend to stick with these brands and can easily distinguish their favourite products from the competition including those at the lower end of the scale.  Even teen pop sensation Justin Beiber has people behind him that ensure his brand can be capitalized on for not only music sales but also to make considerable amounts of money from merchandise and concert appearances.

Brand owners must pay close attention to avoid dilution of their trademark by having it genericized.  No company wants to go down the same path as BAND-AID and KLEENEX.  Dilution occurs when a well known trademark is used so often that it becomes generic in the view of the consumer.  In the case of BAND-AID and KLEENEX, they have become so generic they have lost their trademark status.

Not wanting to go in the same direction, Twitter has made it clear that their trademark is special and not to be used in vein.  A recent article was published describing Twitter’s commitment to their brand and how they have written a “post linking to not only their new logos, but also highlighting the rules when it comes to using ‘tweet’ or ‘twitter’ in a product or service.”  In the article, it mentions that Twitter goes as far as to provide rules on the spelling of Twitter.  Rules on the spelling and subsequent use of a brand name may seem to be a bit overboard, but trademark rights can be lost unintentionally by a brand owner’s consistent improper use of their own trademark.  For example, by using the singularizing or pluralized form it may not be seen as the same use of the trademark depending on the part of the world you are focusing on.

Using your trademark as a noun instead of an adjective can push it to a generic status by the general public.  In the case of KLEENEX, everyone including the company was responsible for referring to this brand of facial tissue only by its name instead of properly describing it as “KLEENEX facial tissue” on a consistent basis.  The public adopted this and I am sure that at one time or another you have said to your co-worker: “Do you have any Kleenex I could use?”, even if you are not specifically referring to the KLEENEX brand of facial tissue.

If you want to ensure that your brand maintains its distinctive quality and to reduce the likelihood of confusion among consumers and potential customers, you may have to adopt a proactive approach similar to Twitter.  The public needs to understand how important your brand is to you and by outlining how it should be used will only put value on it and make it stand out among the other brands.  It would also not hurt to have an online reputation management company like BrandProtect scour the internet for misuse or unauthorized uses of your trademark and to engage with the offenders to have them comply with your standards or rules for making reference to your trademark.

Now let’s see if you can answer the question at the beginning.  Of all the names listed, which ones were registered trademarks?  Answer:  ALL of them!

About Jamila Enta

Jamila Enta is an Account Manager at BrandProtect and blogs about brand abuse and trademark related issues. She is experienced in locating and analyzing trademark infringements found on the internet that may have a negative impact on the client's reputation. Jamila advises, consults and mitigates trademark related issues on behalf of BrandProtect's customers and strives to exceed her client's expectations through hard work and excellent customer service. Jamila has is an active member of the International Trademark Association (INTA) and has served on the Internet Committee's Online Trademark Use Subcommittee and currently serves on the Online Reference Committee's Existing Content Subcommittee.

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