United States: What To Do Once Your Trademark Registers – Avoiding Genericism And Dilution

As discussed  in the previous article in Nutter's IP Branding Series, monitoring competitors' use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.

A brand owner's nirvana is  the fanciful or coined trademark that reaches ubiquity amongst the masses; that is, until the masses are not using the trademark properly. Bayer, with its loss of the mark ASPIRIN for acetylsalicylic acid in the United States, and DuPont, with its loss of the mark CELLOPHANE for a thin, transparent sheet made of regenerated cellulose in the United States,1 can attest to the loss that results from competitors being able to use your once-original mark on the same types of products, and on the same shelves on which your product appears. Consumers can suddenly grab any box of cellophane from the local Target store to wrap-up their leftovers rather than the thin, transparent sheet easily identifiable as being manufactured by DuPont because it is labeled with the registered trademark CELLOPHANE.

So, how do you prevent your brilliant trademark from falling into the genericised graveyard?

First, make sure that you monitor your own use of the trademark so that it is used correctly. This typically means using your mark as an adjective, and not as: (1) a noun; (2) a verb; (3) a possessive; or (4) a plural. It's okay to perform a Google® search to see if Elton John was really asking Tony Danza to hold him closer,2 but don't "check Google," "Google it," "skim Google's results," or "run some Googles" to figure it out. If your product is truly revolutionary and thus there is no noun with which it can be readily used, pick a generic descriptor to use as the noun that your trademark will modify—Velcro® brand fasteners. For pharmaceuticals, be sure to use the trademark in conjunction with a nonproprietary name for the drug based on its chemical structure—Vicodin® hydrocodone/acetaminophen. Also, as learned by the Otis Elevator Company, don't use the mark in a generic way, for instance by using a trademarked term, in this instance "ESCALATOR," as an adjective but in conjunction with another known generic term, e.g., "the latest in elevator and escalator design." The United States Patent and Trademark Office determined that this use led to the genericisation of the term escalator.3

Second, make sure that you monitor the use of those you've given permission to use your trademark. If you license the use of your trademark to third parties, be sure you have a monitoring program in place to review samples of the merchandise on which the trademark is used. Require that your licensee send you samples every year so you can confirm the trademark is still being used properly, and also perform spot checks at retailers and online where the merchandise is sold. Properly means using the trademark in the form in which it is registered, on the types of goods for which it is registered, accurately (particularly if the mark includes design elements), and not in a way that misrepresents the source of the trademark owner. With respect to this last aspect of proper use, you want to make sure that the third party using your trademark is not using it in a manner that would cause a consumer to believe that the third party is the actual owner of the mark.

Third, make sure that you monitor the use of third parties, whether competitors or disinterested third parties. If a competitor is using your trademark to make a comparison between your product and their product, and they are not using the trademark properly, notify them and request they correct it. The same goes for a disinterested third party, such as a newspaper columnist or retail store. Write to the user, explain how the mark should be used properly, and request that they correct the same. Such written contact does not need to be heavy-handed, but rather it can be merely informative. Even if action isn't taken to correct it, evidence of your attempts to police use of your trademark are often more important in preventing your mark from becoming genericised than evidence that the requested changes were actually made. For example, the Xerox Corporation published an ad requesting that people use the term Xerox® only as an adjective.

While the average member of the public probably doesn't care if the Xerox Corporation uses the trademark Xerox® properly, the effort made by the Xerox Corporation has been cited as a reason why the term Xerox® continues to remain a protectable trademark.

Another way you can lose your rights in your trademark is through dilution. Dilution can result from blurring, which occurs when a third party tries to use your mark in another field of goods and services outside of the field for which your mark is registered, and tarnishment, which occurs when a third party uses your mark to make unsavory or unflattering associations. Of note is that dilution only impacts marks that are truly famous. Fame of a mark is based primarily on the following four factors:

1) the duration, extent, and geographic reach of the mark, as evidenced by advertising and publicity;
2) the amount, volume, and geographic extent of sales of goods and services with which the mark is used;
3) the extent of actual recognition of the mark by the public; and
4) whether the mark is registered on the U.S. Trademark Principal Register.

Proving fame is difficult. Further, even those who own famous marks are finding it increasingly difficult to enforce their marks against perceived dilution in view of uses by third parties that are considered permissible. Third parties can use even famous marks without the owner's permission to perform and advertise product comparisons, do news reporting, and use the mark in a noncommercial manner. It is even considered fair use to parody or criticize a famous mark, despite the owner's consideration of that usage as tarnishing the image of the owner and the trademark. For example, Starbucks was unable to stop the use of the term "Charbucks" by a competitor coffee shop, and Louis Vuitton was unable to stop the use of the term "Chewy Vuitton' by a pet chew toy company. Thus, if you do achieve trademark nirvana with your mark, you still may find it difficult to police possible dilution. Regardless, evidence of your efforts to stop such usage will ultimately be helpful in preventing your mark from becoming genericised.

Now that we've covered the actions you can take to protect your successful brand, we'll use the last two articles in our series to discuss strategies for building and protecting your brand in the wake of receiving your trademark registration.


1 Notably, both ASPIRIN and CELLOPHANE are registered trademarks in other jurisdictions, e.g., Canada and many countries in Europe, demonstrating that brand owners should not consider a loss of rights in one country a loss of rights everywhere.
2 To read more about why people often mishear lyrics, read this interesting article from The New Yorker by Maria Konnikova.
3 See 85 U.S.P.Q. 80 (Comm. Pat. 1950). 

Originally published March 23, 2015

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.