Protecting Trademarks from Genericide

Practical Law Legal Update 4-544-5626 (Approx. 5 pages)

Protecting Trademarks from Genericide

by Practical Law Intellectual Property & Technology

Published on 28 Jan 2014 • USA (National/Federal)

A discussion of steps trademark owners should take to prevent their trademarks from becoming generic terms.

Trademarks are often among a company's most valuable and important assets. However, if a company does not take appropriate steps, including properly selecting, using and policing its marks, the company risks those marks becoming unprotectable generic terms (often called genericide) or otherwise losing their trademark significance. This can have a significant negative impact on a business as competitors are then free to use the term.

Trademark rights are typically lost to genericide when a brand owner attempts to assert a mark against an alleged infringer who, in response, counterclaims to invalidate the mark (and cancel any registration for the mark) on the ground that the mark is generic or otherwise no longer functions as a source identifier. For example, in a recent decision, the US District Court for the Southern District of New York denied Tiffany's motion for summary judgment on a counterclaim by Costco alleging that "Tiffany" is a generic term for certain types of engagement ring settings. For more information on this decision, see Legal Update, "Tiffany" May Be Generic for Ring Setting Style: SDNY.

Examples of formerly protected trademarks that became generic terms include:

Escalator.
Zipper.
Pilates.

For more information on trademark genericide and other loss of trademark significance, see Practice Note, Loss of Trademark Rights: Genericide.

To minimize the risk of their marks becoming generic, companies should:

Select inherently distinctive marks.
Use their marks correctly.
Educate employees and the public on the brand name significance of their marks.
Police their marks and take appropriate action against third-party misuse and infringement.

Select Inherently Distinctive Marks

One way companies can reduce the risk of their marks becoming generic or otherwise losing their trademarks significance is to choose marks that are inherently distinctive. These are marks that can immediately identify the source of goods or services. They are protectable as trademarks without a showing of acquired distinctiveness (secondary meaning). The greater the mark's inherent strength, the wider its scope of protection. For more information on trademark distinctiveness, see Practice Note, Acquiring Trademark Rights and Registrations: Distinctiveness.

Use Marks Correctly

Proper trademark use is critical for preventing a mark from becoming generic or otherwise losings its brand name significance. When a brand owner misuses its own mark (for example, by using it as a generic or descriptive term) it can erode the mark's ability to function as a source identifier for the trademark owner's goods or services. Best practices for proper use aim to reinforce the brand name significance of the mark to the consuming public. These include:

Using the trademark as a proper adjective followed by a generic term.
Making the trademark stand out from surrounding copy.
Using proper trademark notice symbols.
Avoiding using the trademark in the possessive (unless the mark is possessive).
Avoiding using the trademark in the plural form (unless the mark is plural).

Educate Employees and the Public on the Brand Name Significance

To help ensure correct use of their marks and lower the risk of genericide or other loss of source significance because of misuse, companies should educate their employees and the public on the proper use of their marks. Ways to accomplish this include:

Developing internal and external trademark use guidelines.
Developing brand identify standards.
Conducting a public education advertising campaign highlighting the mark's brand name significance.

For sample internal guidelines for use in educating employees on how to use and protect company trademarks, see Standard Document, Trademark Use and Protection Guidelines (Internal Distribution).

Police Marks and Take Action Against Third-party Misuse and Infringement

A brand owner's failure to adequately protect and enforce its mark may result in weakened or even lost rights if the mark becomes generic or otherwise loses its capacity to function as a source identifier as a result of third-party infringement or misuse. Proper enforcement is a multi-faceted undertaking that includes:

Monitoring the marketplace for infringements and misuse of the owner's marks. While a variety of commercial monitoring services are available, the most effective monitoring is often done by the trademark owner's employees, for example sales personnel familiar with the relevant marketplace.
Monitoring third-party trademark applications. While a brand owner may identify some infringements from marketplace monitoring, it may discover others only when a third party files a trademark application with the US Patent and Trademark Office (USPTO) to seek to register a potentially infringing mark. Various commercial watch services are available that issue notifications when a third party applies to register a mark similar to the trademark owner's mark or when a similar mark is published for opposition.
Investigating suspected infringements or misuse. Sometimes the nature and extent of infringing activity is obvious from readily-accessible public information (for example, the infringer's website). However, the full extent of the infringer's activity is often not easy to discern. In these cases, a trademark owner should consider engaging an experienced trademark investigator to obtain relevant information to help assess the nature of the infringement or misuse and the appropriate action, if any, to take.
Issuing cease and desist letters as appropriate. It often makes sense for a trademark owner to send a cease and desist letter to the suspected infringer before taking formal legal action. For a sample trademark infringement cease and desist letter, see Standard Document, Cease and Desist Letter: Trademark Infringement. Where the infringement is minor or in the nature of a misuse, trademark owner's counsel should carefully consider the tone of any cease and desist letter and whether an alternative approach, such as a phone call, may be more appropriate. An overly aggressive letter may have negative consequences for the trademark owner, including being labeled a "trademark bully." For more information on trademark bullying, see Article, Expert Q&A on Trademark Bullying.
Taking formal action, including opposing third-party applications and initiating infringement litigation. Sometimes a trademark owner may need to initiate formal legal proceedings to protect its brand, for example where an infringer refuses to comply with a cease and desist letter. Proceedings may include:
- opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB); or
- infringement litigation.

For more information on opposition and cancellation proceedings, see Practice Notes, TTAB Oppositions and Cancellations: Grounds and Defenses and TTAB Oppositions and Cancellations: Practice and Procedure.

For additional resources related to initiating infringement litigation, see Trademark Litigation: Pre-suit Toolkit.

Protecting Trademarks from Genericide | Practical Law