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.

Footnotes

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.

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