Protect your Trade-Mark from Brand Genericide

Originally published by Clark Wilson, LLP. Reprinted with permission.

What does this name mean to you?

When Hillary Clinton recently accused presidential rival Barack Obama of political plagiarism by describing him as the candidate of “change you can Xerox”, trade-mark lawyers at Xerox Corporation likely winced. For years, Xerox has fought against the genericide of the XEROX brand and trade-mark. A genericized trade-mark is a mark or brand name that has become the colloquial or generic description for a particular class of product or service. The generic use of the term “Xerox” as a verb in place of the word photocopy, diminishes the value of the XEROX trade-mark in the marketplace and can result in the loss of intellectual property rights by the trade-mark holder. In the past, Xerox has attempted to police its brand use by launching advertising campaigns promoting the “XEROX machine” and has been successful in protecting the distinctiveness of the trade-mark in the United States and Canada. The brand has however, become generic in Russia, Bulgaria, Portugal and Romania. Aspirin, Band-Aid and Thermos are other examples of once distinctive marks which became victims of brand genericide.

Under trade-mark law generally, a mark should never be used as a noun (whether in singular, plural or possessive form) or as a verb. Every day phrases such as “I need a Kleenex” should be discouraged as the correct use of the mark is “I need a KLEENEX tissue”. It may seem natural and even beneficial from a marketing perspective to use a trade-mark as a noun or verb. Many like to have their trade-mark considered synonymous with the wares or services with which it is associated. However, certain trade-marks, through misuse by their owners and others, have passed into the English language by becoming generic terms. The brands Escalator, Jacuzzi, Linoleum and Tabloid were all once trade-marks denoting a specific product, but are now generic terms commonly used to describe a product category.

Linus Thorvalds, the developer of the Linux operating system and one of the founders of the open source software movement, is another recent victim of brand genercization. In 2005, the Australian Trade Mark Office refused to grant an application to register the mark LINUX by the Linux Mark Institute on the basis that the term Linux was effectively generic and did not identify the goods of any one trader. Indeed, the evidence submitted by the Applicant in the form of internet searches to support the trade-mark application showed that Linux was a term frequently used on the internet to describe open source software operating systems generally and did not demonstrate trade-mark usage. This highlights the importance of controlling a brand at the outset in order to prevent the brand from becoming ineligible for trade-mark protection.

Many organizations, aware of the threat of brand genericide, have been proactive in ensuring that their trade-marks do not lose their distinctiveness through public usage. Yahoo Inc., the company behind the popular YAHOO internet search engine, previously ran advertisements asking “Do you yahoo?”. However, the campaign was pulled when the company realised that using the YAHOO trade-mark as a verb would render the brand generic. Not all companies were as prudent. In 2002, Austria’s Supreme Court ruled that Sony did not have exclusive rights to the term Walkman for personal stereos and allowed a wholesaler to label rival players as Walkmans. The Concise Oxford English Dictionary has defined the term “Walkman”, once a protected trade-mark, as “used for a small audio portable audio player by means of headphones or ear phones”.

The problem is that the more popular a brand becomes the greater the likelihood that rivals will try to brand their own products with similar sounding names. This diminishes the goodwill associated with the original brand and causes confusion in the mind of the general public. It is a problem which Apple Computers must continuously address since its launch of the enormously popular IPOD brand. Apple has been battling against the increasing number of new products seeking to capitalize on the originality of both the term “i” meaning internet and “pod”. Apple recently sent cease and desist letters to two companies which used the word “pod” in products, namely the “Profitpod”, a device for collecting data from vending machines, and the “Tightpod”, a laptop-protecting cover. Applications to register marks such as “Qtunes” and “Jtunes” have begun to appear on trade-mark registers around the world to capitalize on the popularity of Apple’s ITUNES brand. Apple is taking the correct approach in attempting to rebuke brand abuse. Trade-mark holders who fail to take positive action to police their brands may face the same process of genericide to which other previously valuable trade-marks have succumbed.

So the next time you order a sandwich for lunch, spare a thought for one of the earliest victims of brand genericide, an 18th century English aristocrat by the name of John Montague or the 4th Earl of Sandwich. The Earl’s failure to consult a trade-mark lawyer back in 1738 to protect his sandwich invention meant that the word quickly became part of the English language. Are you doing enough to protect your brand from a similar fate?

 

For more information, please contact Neil Melliship .

You can view this article and more at www.cwilson.com

A special thanks to Neil P. Melliship at Clark Wilson in Vancouver BC for allowing us to republish articles from their web site. Clark Wilson LLP is a Canadian law firm, located in Vancouver British Columbia, offering services in all commercial areas.