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Trade mark genericide

How To Avoid Trade Mark Genericide

No, we haven’t made that up – trade mark genericide is real.

It happens when a brand’s trade mark is used in the wrong way. Over time, its value dwindles, as it is no longer seen as the distinctive trade mark it once was. Examples are SELLOTAPE, HOOVER, and PORTAKABIN.

Before we go into trade mark genericide in more detail, let’s recap what makes a suitable trade mark.

You can divide trade marks into the following five categories, which we’ve ranked according to their strength:

 

  1. Fanciful Marks – these are the strongest and consist of made-up words that have no relation to the product being described (e.g. KODAK, PEPSI, and XEROX)

 

  1. Arbitrary Marks – these are existing words that offer no meaning to the product (e.g. APPLE, LOTUS – for software)

 

  1. Suggestive Marks – these are words suggesting meaning without describing the product (e.g. HABITAT, AIRBUS, and NETFLIX)

 

  1. Descriptive Marks – these are words that describe the product and difficult to enforce unless the trade mark has acquired secondary meaning (e.g. SHOELAND)

 

  1. Generic Terms – these are the weakest and words that are recognised as a class of goods/services (e.g. computer software, facial tissues)

 

The problem is, if you don’t police the use of your trade mark, even the strongest fanciful mark can become generic – i.e. it has undergone trade mark genericide.

How does trade mark genericide happen?

Believe it or not, genericide can be a side effect of a trade mark’s popularity.

History is littered with examples such as HOOVER, FRISBEE, and ESCALATOR, which have all lost their distinctiveness over time.

Initially, the mark would have been used as an adjective, such as KLEENEX tissues, APPLE computers, or XEROX photocopiers. However, when its use transforms into a verb or noun, its distinctiveness is lost and so is its value.

How many times have you ‘hoovered’ your living room or played ‘frisbee’ in the park?

How to protect against genericide

First of all, make sure you adopt and strictly adhere to trade mark usage guidelines. Always display your trade mark in capital letters and use the registration symbol ® (assuming it has been registered) immediately after it. Every use should be consistent, and there should be no leeway given on how it’s displayed.

It’s also worth considering using the correct generic term within your marketing, such as “Buy a HOOVER® vacuum cleaner,” or “Buy an APPLE® computer.” This will help reinforce its correct usage.

Marketing campaigns can also work. XEROX did exactly that in America when it became apparent the term XEROX was being used as a verb. They ran a successful promotion encouraging people to refer to “photocopying” documents and not “Xeroxing” them.

Finally, keep a close eye on how your trade mark is being used, especially online. As soon as you see it being misused, get in touch with the author straightaway to educate them on how to use it correctly.

Why all of this is important

If you don’t look after your trade mark, you could end up losing its value and the protection it offers. If yours becomes generic, for whatever reason, rights in the mark may no longer be enforceable.

As the trade mark owner, it is up to you to take appropriate steps to prevent genericide. If you spot misuse, doing nothing is not an option. There are numerous examples of one-time fanciful trade marks that have fallen by the generic-wayside. Just think about KEROSENE, LINOLEUM, and TRAMPOLINE.

Don’t let that happen to your trade mark.

 

If you’re concerned about trade mark genericide, call Ward Trade Marks for a chat on +44 (0) 1284 774841 and make sure your most valuable asset remains safe.

 

 

 

 

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August 14, 2018 Rachael