Internet entrepreneurs often fail to learn and observe the basic rules to INSURE valuable intellectual property rights, including their trademarks and brand names. Learn the proper rules of trademark usage lest you awake to learn that your most valuable business asset has been lost.
Rule No. 1: A generic term is not a trademark.
Already have a headache? Take an aspirin. Yes, once a trademark, now a fallen victim to genericide.
Several important concepts as to “generic” usage and its impact upon brand equity should be learned. We will have some fun in this and the article to follow with some examples, some of which will surprise you.
1. A “coined” term for an Innovative Product. Even a strong, coined mark such as XEROX or GOOGLE can suffer impairment of rights, or in the worst case, extinction without proper attention to Use of the mark, both in advertising, and by the public. This is mostly likely to happen with a product that did not previously exist, since the public has no generic point of reference for the new goods or services being offered to them. As a result, without constant vigilance, the terms can become identified not with the brand owner as the source identifier for the goods or services, but with the services and goods themselves. The pictured ad from XEROX focuses upon informing the pubic as to the proper generic terms to associate with their products, and maintains the focus upon XEROX as a brand.
2. Terms Already Generic. On the other hand, some terms like “Brassiere” were generic to begin with, and no well-advised client should Select much less Use such a term as a trademark. Generic terms are not trademarks, and never will be. Select wisely before one begins Use, since efforts to Register and Enforce may be in vain.
Use of generic and descriptive terms in domain names is also a major issue. Clients are often told by big shot Internet Marketing Gurus to Select domains which are generic or which describe the goods or services. While may be a great domain for searching and marketing sex, it will never be a brand. .com>
3. Pictures of Generic Products. A photo of a zipper, a generic product, can not function as a trademark. XEROX is known for its efforts to teach others how to properly use its XEROX mark. Their recent ad showing a photo of a zipper made this point perfectly. (See resource box for link to picture).
4. Generic Terms Used in a Arbitrary or Distinctive Manner. Terms which are generic for some usages have been held to be valid trademarks when applied differently. Cross reference this point to the types of marks, and Selection. For example “apple” as applied to a type of fruit is generic. As applied to computers, it is “arbitrary.” A less obvious example is SIDE DISH, which was held not generic for frozen potatoes even though it would be generic “for food served to accompany a main dish.” Confusing, you bet!
Headache? Take some bufferin. Just an example of a trademark held descriptive, not generic. (But that’s a topic for another day).
“What’s an aspiring Brand Owner to Do?”
1. Use Your Trademark as an Adjective-A Rule For Every Brand
Wise brand owners always use their marks in advertising as an “adjective” in combination with the generic term for the product or service. This is particularly important where the product is new and unique; it runs the risk that “the trademark will become the thing itself.” (Aspirin for example). Here’s an example of “curiously strong” usage:
Inclusion of both terms together, with the brand being more distinctive in appearance, reminds the consumer of the generic term, as well as the particular brand of the generic.
2. Monitor Public Usage. Learn from the XEROX trademark program. Efforts do not end with monitoring one’s own advertising. Every brand owner must learn the rules and review content but this is simply the beginning. The XEROX usage program goes a step further, and teaches the public at large as to how its mark should be used. It’s a subtle reminder not to say, “Can you “Xerox” this for me?” Instead, the generic term is “copy.” XEROX is doing a wonderful job of teaching others how to use its mark! You can learn from this, and do the same.
We advise our clients to contact us when they see an article on the Internet that mistakenly uses brand in a generic sense. We write polite letters calling the improper use to the innocent offender’s attention. Most people are happy to correct the usage, which if unattended, can lead to genericide.
3. Don’t think Generic, think Distinctive. Unless you are certain you can successfully Select and Use a generic term as a trademark for goods and services in an arbitrary fashion (for goods other than the ones they identify generically), “Don’t try to Select or Use them to build a brand, period.”
4. Re read Rule Number 1 at the beginning of this article.
The BRANDAIDE(TM) acronym “INSURE” stands for Investigate, Noodle, Select, Use, Register and Enforce. INSURE simply reminds brand owners to constantly monitor the status of brand protection on an ongoing basis, as well as the steps to follow in doing so. It is not easy however to separate Selection from Protection or Use; or any of them from the need for a strong Enforcement program. As a result, there will some overlap among the areas, the law of cause and effect applied to brand protection. Improper advice in one area will adversely impact another, sometimes permanently. As we guide business owners in their quest to build a strong brand this law of cause and effect will be become clear.
Has your anxiety level risen while reading this post? Take some PROZAC®. It is still a trademark and not generic, but a brand!
Are you ready for more? Fill a “Thermos” with “Cola” and Ride a “Hog” up an “Escalator” for some “Primal Therapy.”
Copyright 2008 Hodgson Law Group