How to prevent your trademark from becoming the victim of ‘genericide’
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Small businesses often ask how they can keep their trademark out of the public domain because they see it as a complicated and often expensive exercise.
What do the words videotape, escalator, trampoline, laundromat have in common? They were all once legally protectable trademarks which, due to the way in which they were used, lost their distinctiveness and have since become ‘generic’.
What does ‘generic’ mean? Melissa Morris, senior associate and trademark attorney at Adams & Adams, says a generic trademark is a word or phrase that becomes the common term for an entire class of goods or services over time.
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“Generic trademarks are not protectable under trade mark law. Essentially, the term becomes the ‘brand’ for a group of products, such as the word ‘Aspirin’ that became the common name for several pharmaceutical pain-relief products regardless of the brand. This genericide happens when consumers, over time, associate extremely popular trademarks with the products and services themselves instead of a specific source.”
Morris says the genericide of a trademark can happen to any brand owner, even where the trademark is used and promoted in good faith. Therefore, to continue enjoying the rights of your trademark, you should at all costs protect your brand from falling into the public domain.
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What can you then do as a small business owner to protect your trademark? Morris suggests that you:
Choose a strong trademark at the get-go. Invented words that have never been used in association with particular goods or services are the strongest kinds of trademarks.
Always use the ™ or ® symbol when using your trademark to avoid confusion in the minds of consumers between the products or services themselves and the brand names or trademarks associated with them. In South Africa, the ® symbol may only be used in relation to a registered trademark.
Do not use your trademark as a noun or verb. Trademarks should always be used as adjectives, such as a FERRARI car and not simply, a FERRARI or a KLEENEX® tissue and not a KLEENEX®.
Trademark owners must actively police how the media or competitors use their trademarks. Where misuse occurs, such as when someone uses your trademark to refer to the products and services they represent instead of as a source indicator, you must consult a trademark attorney to determine possible legal options.
Ensure that you have detailed brand guidelines and protocols regarding the correct usage of your trade mark, such as particular fonts, colours, positioning on packaging for internal and public relations use. It is also a good idea to train your staff regarding these issues.
Advertising campaigns can also help to educate consumers on the correct use of the trademark. The lawyers of KLEENEX® recently launched a light-hearted social media campaign to thank the general public for saying ‘KLEENEX® brand tissue’ and educate them on the proper use of the trademark.
Morris says you can save yourself from having to use a KLEENEX® brand tissue while lamenting the loss of all the rights you may have acquired at a great cost and effort in your trademark due to genericide.
Her colleagues, attorney Kim Erasmus and Sajidha Gamieldien, partner and trademark attorney, say the benefits of having a good brand name are that:
Registration provides an easy remedy against infringement.
It helps consumers identify your products or services and brand.
It acts as a deterrent to potential infringers.
Trademarks can appreciate in value over time, meaning that the more your business reputation grows, the more valuable your brand will be.
Trademarks can be sold, licensed or used as a security interest.
Registration allows a trademark owner or licensee to use the words ‘Registered Trademark’ or an abbreviation or the international recognised symbol ® in conjunction with the trademark.
Trademark protection is renewable. In most cases, you are afforded protection for a 10-year period.
Registration affords a prima facie right to use the trademark concerned.
Choosing the right trademark requires a great deal of thought. Erasmus and Gamieldien say the basic requirements of a good trademark are that it must be capable of distinguishing your products or services from others and that your trademark must not conflict with prior marks on the register or marks used in the trade.
There are five different categories of trademarks:
Coined or fanciful marks: a fanciful trademark is a made up or coined term that had no meaning before its use as a trademark, such as XEROX, KODAK, SKYPE, ADIDAS and ROLEX. In most cases, it is easy to secure registration of these kinds of marks, but fanciful marks or coined terms will require greater marketing efforts to promote your goods or services, especially in the early stages of your business when most consumers do not know who you are or what you offer.
Arbitrary marks: these are marks which already exist but are used in a way that is unrelated to its meaning or your business. A classic example of this is APPLE for computers as iPhones and laptops clearly have nothing to do with fruits or cider. Also think of SHELL for petrol stations and AMAZON or GUMTREE for online marketplaces.
Suggestive marks: a suggestive mark hints at the type of goods or services you offer or its quality, such as NETFLIX (movies or ‘flicks’ that are ordered online) and MICROSOFT (suggests software for small computers). Suggestive marks are also generally good for trademark purposes as they are often catchy and clever and immediately informs the consumer what your products or services of interest are. As long as they are not entirely descriptive of your products or services, they make great trademarks. The types of marks are inherently distinctive trademarks and are among the easiest to protect.
Descriptive terms: these marks merely describe the goods or services you offer, such as COLD MILK for dairy products. This kind of marks would normally fall foul of the first requirement to distinguish your product or service from those of others. However, all is not lost. If you adopted a mark that is descriptive, you may still be able to protect it by showing that it has acquired distinctiveness through use.
Generic terms: these are marks understood by consumers as the common term for a product or service, such as the word “chocolate” that would be generic for chocolate bars. Try to stay away from these terms when choosing a brand name.
They say ultimately, the strength of a trademark also depends on how well consumers associate your mark with your products and services compared to others. Memorability and contextuality is key.
The second requirement, whether the mark is available for registration, relative to other marks on the register is usually met by first conducting a trademark search before filing an application. A search is important as it helps to determine whether adopting your trademark is likely to result in a conflict.
“It is best to check this before you go into the business development phase, decide on a mark, become emotionally attached to it and invest a lot of time, effort and money in it, only to find that your mark infringes existing rights.
In this case, they advise small businesses to:
Consider inventing a new word. Drug companies tend to take this approach, such as PROZAC and VIAGRA.
Combine two existing words and create a new one, such as YOUTUBE that includes the word YOU and TUBE and in doing so creates the idea of watching something of your choice. It is authoritative and catchy.
Consider combining descriptive or generic words with arbitrary marks, such as PANDA EXPRESS and HUNGRY LION.
Consider words that invoke a certain emotion or call to action. Such as GEEK SQUAD for IT services or ROAD RAGE for road safety services. These examples have desirable meanings but are not descriptive.
