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A trademark helps distinguish a business's offerings from those of its competitors. In a crowded marketplace, a distinctive trademark allows consumers to easily identify and choose a particular business's goods or services over those of others. Over time, a trademark becomes associated with the reputation and goodwill of the business. Positive experiences with a particular good or service serve to reinforce the value of the trademark. This goodwill can translate into repeat business and referrals.
When a trademark becomes generic
However, a trademark can become so well-known that consumers and other parties use it as a generic term for all similar goods or services, effectively eliminating its distinctiveness. This phenomenon is known as “genericide.” Once a trademark becomes generic, the owner can lose its exclusive rights to use the trademark. This means competitors can use the trademark freely, and the original owner can no longer prevent others from using it.
Examples of trademarks that have experienced genericide include ASPIRIN and CELLOPHANE. These terms began as trademarks but eventually lost their distinctiveness (and thus their protection) in the United States after becoming generic terms. These terms have thus far retained trademark protection in certain countries, including Canada, despite being declared generic in the United States.
Why distinctiveness matters
Canada's Trademarks Act defines a distinctive trademark as one that distinguishes the goods or services in association with which it is used by its owner from the goods or services of others in the marketplace.
Without distinctiveness, a trademark cannot perform its primary legal function of identifying the source of a particular good or service. Further, a registered trademark can be expunged (removed from the trademark register) if the court determines that the trademark is not distinctive of the goods or services with which it is associated.
Preventing genericide: Tips for trademark owners
To maintain trademark protection and prevent genericide in Canada:
- Use your trademark appropriately: Always use your trademark as an adjective rather than a noun or verb (e.g., say “Kleenex® branded tissues” rather than simply “Kleenex”). Use the trademark exactly as it is registered (e.g., do not abbreviate, pluralize, or otherwise alter the trademark).
- Educate others: Encourage correct usage of the trademark through effective marketing and communications. Assist others in easily identifying the trademark as a trademark. For example, use the ® symbol if the trademark is registered, or use the TM symbol if the trademark is not registered. Emphasize the trademark (e.g., use capital letters or other typographical emphasis, such as bold font, to make the trademark stand out from other text or designs). For instance: “Kleenex® branded tissues.”
- Monitor the marketplace: Monitor how third parties use your trademark and take prompt action to correct or prevent any unauthorized uses, including descriptive uses.
About Dentons
Dentons is the world's first polycentric global law firm. A top 20 firm on the Acritas 2015 Global Elite Brand Index, the Firm is committed to challenging the status quo in delivering consistent and uncompromising quality and value in new and inventive ways. Driven to provide clients a competitive edge, and connected to the communities where its clients want to do business, Dentons knows that understanding local cultures is crucial to successfully completing a deal, resolving a dispute or solving a business challenge. Now the world's largest law firm, Dentons' global team builds agile, tailored solutions to meet the local, national and global needs of private and public clients of any size in more than 125 locations serving 50-plus countries. www.dentons.com
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