Losing Your Brand Identity: How To Commit Trademark Genericide Without Really Trying

There are many reasons why 'genericide' can happen, but in the end, the result is always the same -- the loss of valuable intellectual property.

Trampoline. Aspirin. Escalator.  You know these terms with respect to a fabric springboard, headache pills, and moving stairs respectively, but these examples all have one thing in common — they were once valuable trademarks of the goods they represented.  Oddly, one would think that the general acceptance of a term with respect to goods or services would be a good thing, but in actuality, acceptance that rises to the level of identification with the specific good or service (as opposed to the source of such goods or services) is the death knell for trademarks. There are many reasons why this “genericide” can happen, but in the end, the result is always the same — the loss of valuable intellectual property that can be devastating to the trademark owner.

Although operating to distinguish the goods and/or services of one company from those of another, trademarks serve as valuable source identifiers to the consuming public.  Think about it — when you hear “Coca-Cola,” you immediately associate the term with a well-known soft drink.  The same is true with the logo of an apple, which has become associated over time with Apple Computer Corporation and its wide range of computers and mobile devices. Whether inherently distinctive or otherwise acquiring such distinctiveness over time, their operation as source identifiers are seminal to their value.
Sometimes, such terms simply are so descriptive that they cannot serve as source identifiers (think “corn flakes” or “oat bran”).  These are not the focus here (we’ll leave those for another time).  When such names, terms, or other descriptors no longer operate to serve as identifiers, then they can no longer operate as trademarks.  This is the “gist” of becoming generic — the trademarks lose their ability to operate as source identifiers because the consuming public no longer associates them with the original goods or services.  This is what happened with the trademarks mentioned above, as well as a host of others — they became so well known that the consuming public “merged” the trademark with identifying the goods themselves.  To the extent others produced and sold the goods, these trademarks lost their trademark status over time.
Steps can be taken to prevent trademarks from becoming “genericized,” but it seems that the efforts necessary to do so are somewhat proportional to the level of acceptance.  Just ask Xerox Corporation — finding that the consuming public was using its trademark “Xerox” to refer to the photocopies created by their photocopiers, the company took action on a number of fronts, implementing a marketing campaign designed to walk-back such use. For example, on of their advertisements read, “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache.” It was a catchy way to handle a touchy situation, and has worked for the company.  The owners of the registered trademarks Kleenex, Rollerblade, and Tabasco took similar actions (and quite frankly, should continue to do so).  Sadly, not everyone has been so lucky (just ask Otis Elevator — the original trademark owner of the term “escalator”).

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There are many steps a trademark owner can take to avoid trademark genericide, but they will depend upon the circumstances.  That said, some things can be done that are common to all trademark owners, and all are strongly recommended:
Never Use Trademarks as Nouns.  This may seem axiomatic, but you would be stunned how many brand owners make this mistake.  When building a brand, the mark should always be used as an adjective to describe the good or service (think Thermos insulated containers), and never to describe the good or service itself (a thermos).  This step is one of the simplest to implement, but in practice seems more difficult to oversee.  Make sure your trademark policies reflect such requirements, anymore importantly, ensure the proper level of oversight to ensue they are followed.
Watch for Improper Licensee Uses.  Having policies is one thing; making sure they are followed is another.  Marketing must be consistent in use of the marks both within the company (and any affiliates)  as well as with trademark licensees.  Since all trademark licenses require some level of quality control by the licensor to be valid, it is essential that the company implement appropriate licensee oversight.  This can take the form of more stringent requirements (such as prior review and written consent from the licensor before using marketing materials containing the trademark(s)) to more general oversight requirements (such as audit of marketing materials and a process for correction when problems are identified by the licensor). In any event, policy enforcement is a must and cannot be ignored.

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Avoid Being Lulled by Success.   The old maxim “don’t let success get to your head” applies equally well to the trademark owner.  As trademarks become well-known, it is easy to take ones eye off the ball and bask in the acceptance of the brand in the marketplace; however, it is at this point that a trademark owner must be most vigilant!  As popularity increases, the risks of losing brand identity increase as well. Trademark owners have a duty to police their trademarks, so there are no excuses here — ensuring proper usage should be part of any trademark policing policy.
I understand the difficulties presented by policing trademark uses — it’s difficult to shape use by the consuming public (especially when a brand has achieved a certain level of success and acceptance).  That said, brand owners simply can’t ignore the problem and hope for the best. Doing nothing is an absolute recipe for the disaster, and one headache that no aspirin will fix.

Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.