by Ivan Lipshitz, Adv., JMB Davis Ben-David
In my first part article on “Genericide” I discussed the legal concept of “Genericide“, and how it can occur. In my second part article I discussed the “Trademark Spectrum” used to determine trademark distinctiveness and strength as well as the legal standard which courts use to determine if “Genericide” exists with respect to a specific trademark. In this my third and final article on this topic, I will suggest to the trademark owner a number of key avoidance strategies and preventative measures to be adopted to avoid your trademark from becoming vulnerable to “Genericide”.
The following are 8 suggested key strategies and steps you can take to prevent your brand and trademark from becoming generic terms:
- Adopt Correct Grammar Usage: Do not use the trademark as a noun or as a verb One kind of misuse is where you use the trademark as a noun, essentially to describe a product rather than as a descriptor to qualify the generic name of the type of product. Examples where this has happened include, the reference to a cardiac pacing device as a “Pacemaker”® (noun) and not a “Pacemaker® heart rhythm device”(descriptor) or referring to running shoes as “Nikes®” rather than “Nike® running shoes”. A trademark should also not be used as a verb. For example, while it is common to say that we “Google®“ a search term, we should, more correctly, refer to conducting a “Google®” search on that term. Similarly, you do not “Xerox®” a document, you make a photocopy of the document using a “XEROX®” copier. Another kind of grammatical misuse is where you pluralize the trademark. If you need to identify more than one product or service, make the noun following the trademark plural, not the trademark itself. For example, we should more correctly say, “I bought two ” COKE® soft drinks” rather than two “ Cokes®”.
- Use the word ‘brand’ after the trademark: As an alternative to using the common name for the product or service, you may elect to use the word ‘brand’ after the trademark. Examples of products that use this strategy on their packaging include Kleenex® brand tissue, Jell-O® gelatin and Kettle® brand potato chips.
- Use the proper trademark symbols with your trademark: Use the appropriate symbol, TM or ®, with your trademark in all your digital and printed material. Use the symbol ™ to denote that the trademark is being used in business as a pending or unregistered mark. If the mark has been registered, you can use the “R in a circle“ symbol or ® following the mark as an indication that the mark has been registered with a national trademark office. This is important to place the public on notice that the term is a trademark and should not be used as the generic name for the product or service. You can distinguish the trademark from surrounding text by capitalizing the entire name, using a distinctive typeface or, at the very least, capitalizing the first letter.
- Expand the use of the trademark for use on other related products or a line of products: Using a trademark on a variety of products or a line of products can assist in preventing it from becoming a generic term for one product. For example, the “BAND-AID®” mark was originally registered for use on bandages only, but it is now registered for use on a variety of other products, including antibiotic and pain relief preparations and foot care products.” NIKE® “ is used on sneakers and a range of sports clothing.
- Engage the Media and Advertisers to use trademarks in the proper way: As a branding strategy, trademark and brand-owners have not only told consumers to buy their products, but also how to use their trademarks in the proper way. Willy`s Overland Motors not only came up with the proprietary name “JEEP®” but also the generic common commercial name for the product category, “SUV (sports utility vehicle)” for advertising their JEEP®. They created the slogan: “ They invented “SUV“ because they can’t call them “JEEP®”. Trademark and brand- owners should furthermore advertise directly to those who use and write about their products and services in the media. Trade publications that target their intended audience can carry messages to remind them of the proper use of trademarks and the common name of the product or service. For example, Rollerblade® placed an ad in trade publications reminding journalists and consumers on the proper use of the generic terms “in-line skate(s), in-line skater(s), in-line skating” instead of the following: “rollerblading, blading, rollerblade(s), blade(s), rollerblader(s), blader(s).” which are misuses of the ROLLERBLADE® trademark.
- Actively educate individuals both within and outside your organization about the correct use of your trademark. Suppliers, licensees, distributors, franchisees and the general public at large all have a considerable influence on whether a trademark becomes a generic term. It is important, therefore, that trademark and brand -owners create trademark use guidelines that educate the above group of people on how they can and cannot use their marks. FIFA, for example, publishes Public Guidelines for Use of its Official Marks, which are updated periodically. Remember that incorrect use of your mark, even internally, may inadvertently dilute your own mark by confusing the public about its correct usage. Misuse often occurs due to lack of education, not wrongful intent. Such use includes social media which means that internal use quickly becomes external. It is also important that you undertake detailed market research showing the relevant public`s understanding of the mark and an evaluation thereof. Ensure that you keep meticulous records of the results of such marketing research and evaluation as well as your advertising spend, revenue figures, and unsolicited press mentions in relation to your mark so that you can prove “acquired distinctiveness”, if necessary.
- Actively monitor and protect your trademark against infringement in social media and on e-commerce platforms: Genericide often occurs when competitors use a trademark as a generic term to advertise their own products. To protect a trademark and prevent this kind of misuse, a trademark and brand- owner needs to actively monitor social media and e- commerce platforms for infringement, even if it means chasing down and suing competitors for such infringement. Our firm recently successfully obtained the take- down and removal of over 300 sale listings on AMAZON® and other e-commerce platforms by competitor companies of our client, a world -leader of branded proprietary technology devices, instruments and accessories for the medical and aesthetic treatment of skin conditions. These competitor companies were advertising for sale on AMAZON® and other e-commerce platforms machines, devices and accessories using the name and trademark of our client as a generic name for their own goods and products. It is recommended that you hire a search service provider to monitor print and online publications and the Internet to identify improper uses of your mark. You can then approach media channels that misuse your trademark identifying the misuse of your mark and its improper usage and can point out the proper way your mark should be used and referenced.
- Be creative and actively embrace a unique and standout public relations campaign and advertising program and strategy: If a trademark owner suspects that the public is starting to use its mark as a generic term, it must take immediate preventative action to educate the public regarding the correct use of the mark. This is best done in an engaging, entertaining, and appealing way. For example, in 2018 Velcro released a light -hearted and humorous music video called, “Don’t Say Velcro” to help protect its VELCRO® mark from becoming generic. In this unique and standout light-hearted music video actors playing lawyers explain in a “tongue-in-cheek” and entertaining manner through song and dance that the company will lose its trademark if the word “VELCRO®” is used in a generic way to refer to all hook-and-loop fasteners.
Brand Owners who wish to avoid their marks from becoming genericized and losing valuable trademark rights are best advised to follow the preventative advice and recommended strategies set out above. Otherwise, the risk of your trademark being considered a generic term for a particular type of product may be an unavoidable consequence of your brand`s success, and the threat of genericide may haunt you and your brand throughout its continued existence.
If any of your trademarks may be vulnerable to “ Genericide” and you need assistance with the implementation of any of the above described brand protection strategies to ensure that your brand name or trademarks continue to be legally protected, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.