Alt Legal Connect Session Summary: When It Isn’t What It Is: Maintaining Brand Distinctiveness and Avoiding “Genericide”
Alt Legal Team | October 28, 2020
Thank you to Morgan Sills for participating as a Law Student Reporter at Alt Legal Connect! Morgan is a 3L at Howard University School of Law. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals.
On Monday, October 26, Tish Berard of Velcro Companies and Josh Jarvis of Foley Hoag presented the session, “When It Isn’t What It Is: Maintaining Brand Distinctiveness and Avoiding ‘Genericide.’” Genericide is a painful process for proud trademark owners, but Josh and Trish have some great tools to prevent it. Marks like Escalator, Aspirin, Kerosene and Teleprompter were all once brand names that were famously felled by genericide. But where did they go wrong, and how can new trademark owners avoid a similar fate?
Cause of Death
Although there is truly no such thing as a “generic” trademark (all marks have either inherent or acquired distinctiveness), the public often refers to trademarks that have become the common names for products as “generic” marks. This process of losing distinctiveness, and therefore legal protection, is called genericide.
Surprisingly, the most fanciful marks are the ones most likely to die from public overuse, specifically because their names are so recognizable. Fanciful or coined names often identify products that are entirely new or first-to-market. If the public doesn’t have another name for the product itself, people can latch on to the company name as the name for the product itself. And without proper steps from the trademark owner, marks often become the accepted name for the product.
How does one know when their mark is losing its distinctiveness? There are a number of factors, including its use as a common noun or verb in the media, its use by other brands as a generic name, the lack of an alternative generic name in the market, and inclusion in the dictionary as a common term. This results in a loss of proprietary rights for the trademark owner.
Prevention is the Best Medicine
Brand name education and trademark enforcement become much more difficult after a product’s success. To stay ahead of this, trademark owners of inventions and new-to-market products should create user-friendly generic names as soon as their product is released. These names can be used alongside trademark names to maintain distinctiveness.
For products already on the shelf, Josh gave some simple tips for trademark owners to demonstrate the correct use of their brand name. To start, owners should not use their trademarks as nouns on their own, plural nouns, or verbs. The mark should be used as a proper adjective to describe a generic term. And it should always be seen with its appropriate trademark symbols, eg., ™, ® , etc.
Tish offered wisdom from her work at Velcro by using the company’s formatting policy as an example: the VELCRO® mark can only be used with genuine VELCRO® products, and never with any third party products. The product can only be written in a specific format: the VELCRO® name must always be capitalized and followed by the word brand, and this in turn must be followed by the generic name of the product. For example, “Our product features VELCRO® Brand fasteners.” The VELCRO® trademark can never be incorporated into another trademark or a third party’s brand name, and it can never be hyphenated or abbreviated.
Education is Key
Above all else, education is the sure-fire weapon that must be in every trademark owner’s arsenal for genericide prevention. This means education for the media, education for the public, and education the trademark owner itself.
Trademark owners must be diligent in managing media coverage of their brand, which means demonstrating the proper use of their brand name and educating the media on how their brand should be portrayed. However, there must be a balance to this approach – the media can be a friend or a foe! Media outlets rarely correct themselves or change previous news coverage, and aggressive messages for trademark enforcement probably won’t put brand owners on their good side. Friendly messages that seek to inform reporters on the proper use of brand names are more likely to be heeded for future reports, and are less likely to be disregarded.
Private entities are another story. For at risk marks that have gained a level of fame, an aggressive approach to trademark policing and enforcement is useful. Classic cases of infringement or misuse in connection with competing products should be approached through policing of the marketplace, including opposition and cancellation letters for confusingly similar applications and registrations, cease and desist letters for infringers, and demand and take-down letters for infringement or misuse of brand names online.
Public Education: DON’T SAY VELCRO! But do sing along.
While some trademark owners have appealed to reference books and dictionaries to inform the public’s use of their mark, others have invested in larger campaigns. Complete with a musical number and visual aids, VELCRO® launched its campaign “Don’t Say Velcro!” to much success and renown in 2017. It was one of the first trademark campaigns to fully embrace digital and social media tools, and has received 4 million views and over 900 million media impressions to date. The video was aimed at educating the public on the purpose of trademark protection for brand name VELCRO® and the proper use of the phrase “hook and loop” for the basic product. After going viral, the initial video was so successful that the company eventually released a follow-up video to thank its supporters and internet trolls for learning to use the phrase “hook and loop” properly.
Educating the Brand Owner and Staff
Lastly, the brand owner and their company must learn brand compliance. This includes the folks in upper management, the marketing and public relations teams, the sales representatives, third party distributors, and the retailers who sell the product everyday. All of these sectors must work together as a team to demonstrate proper use of a brand name to the public, and to aid the company in policing use of the name online, especially on social media.
Together, proper introduction of a brand name into the marketplace, diligent trademark policing and enforcement, and pointed education campaigns on brand names can create a formidable defense against genericide.
Access the Recording and Materials: Click here
Resources Mentioned:
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For more on letters of protest, check out this blog post: https://www.altlegal.com/blog/alt-legal-ip-docketing-blog/filing-letters-of-protest
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TMTKO Watch Service (Thanks, Rukayatu Tijani!)
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I also like Markify for watch reports (Thanks, Karima Gulick!)
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Here’s a blog post with some more info on the distinction between the principal and supplemental registers: https://www.altlegal.com/blog/alt-legal-ip-docketing-blog/a-matter-of-principal-clarifying-principal-v-supplemental-registers
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Here’s a blog post on responding to descriptiveness refusals: https://www.altlegal.com/blog/alt-legal-ip-docketing-blog/a-distinct-category-how-to-overcome-a-2e1-refusal