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Organisations have different ways to avoid their brands to suffer trademark generalisation.

In most cases, it is the propensity of trademark holders to encourage the public to adopt their marks as generic "household" words that caused their brands to suffer trademark generalisation. This is easy to resolve.

 

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if it isn't duncan it's not yo-yo

 

 

Practial guidelines

Some practical advice:

  • Use the generic name of the goods with the trademark (Q-Tips cotton swabs)
  • If your product is the first entrant, come up with a generic term for the product. Eg "hook and loop"-fastener instead of Velcro
  • Give proper notice of a registered trademark to consumers by using either: “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm.Off.” or the letter R enclosed within a circle, ®. 15 U.S.C. § 1111. For an unregistered mark, use TM;
  • Distinguish the trademark from surrounding text by capitalizing the trademark, using a distinctive typeface, or at the very least, capitalizing the first letter of the trademark;
  • Use the trademark as an adjective (KLEENEX tissues);
  • Do not use the trademark as a noun (KLEENEX);
  • Do not use the trademark in the plural (incorrect: buy two DR. PEPPERS; correct: buy two DR. PEPPER soda beverages);
  • Do not use the trademark as a verb (incorrect - XEROX the document; correct - make a copy using a XEROX copier);
  • Do not abbreviate the trademark or alter it in any way (use H&M and not H and M);
  • Use the trademark on a line of products rather than a single product (NIKE, used on sneakers and clothing);
  • Object to others’ misuse of the trademark;
  • Educate the public, including individuals within the trademark owner’s organization, distributors, dealers, and consumers, to ensure proper usage of the trademark. Misuse often occurs due to lack of education, not wrongful intent

References

[INTA]

Possible additions

[Folsom p2-3]
A number of factors may account for the linguistic deterioration of trademarks into generic words:

  • Misuse of the mark by its holder in advertising and labeling;
  • insufficient policing of improper use of the trademarked word or
  • the absence of a short and simple alternative name for the product.

Perhaps even more significant, is the propensity of trademark holders to encourage the public to adopt their marks as generic "household" words. 

As a result, a significant number of words currently claimed as trademarks are being used generically by the public and the media.

In cancellation proceedings, courts should also consider the amount of time, money and energy expended by the  trademark owner in promoting his trademark, together with the volume of sales generated.

[INTA]

In order to avoid genericide, trademark owners should adhere to the following guidelines when using their trademarks:

  • Use the generic name of the goods with the trademark (Q-Tips cotton swabs) (and, if your product is the first entrant, come up with a generic term for the
  • product);
  • Give proper notice of a registered trademark to consumers by using either: “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm.
  • Off.” or the letter R enclosed within a circle, ®. 15 U.S.C. § 1111. For an unregistered mark, use TM;
  • Distinguish the trademark from surrounding text by capitalizing the trademark, using a distinctive typeface, or at the very least, capitalizing the first letter of
  • the trademark;
  • Use the trademark as an adjective (KLEENEX tissues);
  • Do not use the trademark as a noun (KLEENEX);
  • Do not use the trademark in the plural (incorrect: buy two DR. PEPPERS; correct: buy two DR. PEPPER soda beverages);
  • Do not use the trademark as a verb (incorrect - XEROX the document; correct - make a copy using a XEROX copier);
  • Do not abbreviate the trademark or alter it in any way (use H&M and not H and M);
  • Use the trademark on a line of products rather than a single product (NIKE, used on sneakers and clothing);
  • Object to others’ misuse of the trademark; and
  • Educate the public, including individuals within the trademark owner’s organization, distributors, dealers, and consumers, to ensure proper usage of the trademark. Misuse often occurs due to lack of education, not wrongful intent

 

It is often the case that the holders of intellectual property rights will lose those rights based on their own conduct: failing to pay renewal or maintenance fees, failing to disclose prior art to the Patent and Trademark Office, misusing or abusing those rights in commercial transactions, and so on.

However, the loss of rights due to genericism arises from the use of a mark not only by the mark owner (though this is certainly possible), but also by competitors, consumers, the media, and others. Given the large investments that many firms make in building goodwill in their brand identities, trademark owners often go to great lengths to control, or at least influence, third party use of their marks so as to avoid claims of genericism.

There are generally three proactive approaches that mark owners have taken to decrease the likelihood that their marks will become generic.

First, the mark owner can impose direct contractual obligations on licensed users of the mark. Thus, in trademark license agreements, it is common for mark owners to prohibit their licensees from using the licensed marks in a manner that might lead to their genericism. These prohibitions often include prohibitions on use of the mark as a verb (e.g., don’t say “I am going to Xerox these papers”) or as a noun (e.g., don’t say “Where is the Xerox of my expense report?”). And while such restrictions would not be unexpected in sophisticated commercial arrangements between mark owners and, for example, product manufacturers and distributors, these types of anti-genericide provisions also appear in mass market agreements that are intended for a much broader audience.

Second, mark owners can take their anti-genericide campaigns directly to the public – to users and consumers of products beyond contractual licensees. This sort of direct intervention can come in the form of product advertising, in which the mark owner reminds consumers that its mark designates a particular brand of product rather than the product itself. For example, Landes and Posner describe how General Foods diligently advertised the first widelydistributed decaffeinated coffee as “Sanka-brand decaffeinated coffee” rather than simply “Sanka”. General Foods thus succeeded in preventing Sanka from becoming a generic term, and in promoting the alternative generic term “decaf”

Xerox Corporation is perhaps the best known proponent of the direct-to-consumer counter-measure ad, producing a large quantity of advertising designed not to promote its products, but to protect its trademark. Other attempts to append generic terms to product brand names in order to avoid genericide include Scotch transparent tape, Kleenex facial tissue, and Vaseline petroleum jelly. As noted by Professors Lydia Loren and Joe Miller,

“If the Otis Elevator Company, inventor of the escalator, had promoted the product as a “moving stairway,” escalator might still be a trademark.”

Most recently, the legal department at Velcro Companies released a series of clever music videos urging consumers to use the term “hook and loop fastener” to refer to the ubiquitous fabric fastening system invented by the company more than sixty years ago:

You call it ‘velcro’ but we’re begging you

This is [bleeping] ‘hook and loop’. …
If you keep calling these ‘velcro’ shoes,
Our trademark will get killed.

Toward the end of one of the videos, Velcro makes a general appeal on behalf of all trademarks in jeopardy of genericide:

If you need something to clean up your socks,

Do it with bleach and not with [Clorox].
If you have blood from a boo-boo you made,
This is a bandage and not a [Band-Aid].
If you’re exercising with someone you’re dating,
It’s inline skating and not [Rollerblading].
I know that bleeped stuff is more fun to say,
But if you keep doing it our trademarks go away.

In ads like these, the mark owner identifies a generic term that can be used instead of the trademark to describe the function of the product – its genus (e.g., “copy” or “photocopy”) – while reserving the trademark to identify the source of the product (e.g., a Xerox copier). While the effectiveness of consumer ad campaigns such as these is not known, the number of (largely derogatory) viewer comments received by Velcro in response to its music video suggests that, at a minimum, consumers are hearing the message.

The third general approach taken by mark owners to protect their marks from becoming generic has been to police improper uses of the mark in the marketplace and then request that users cease and desist from those uses, sometimes threatening litigation if they fail to comply. Professor John Ingram describes this approach as employed by The Coca-Cola Company, the owner of one of the most valuable marks in the world: Coca-Cola employs people to visit retail establishments which do not serve Coca-Cola products and specifically order Coca-Cola or a Coke. If the establishment serves a cola-type beverage without comment, the Coca-Cola employees send a sample of the beverage to Coca-Cola's laboratory for chemical analysis. If the beverage is determined to not be a Coca-Cola product, the company will ask that retail establishment to stop the deceptive practice. If the practice continues, Coca-Cola will bring suit for trademark infringement. Of course, these prophylactic measures do not guaranty that a mark will not be challenged as generic, and many cancelation proceedings have been brought and won even after mark owners have taken such precautions.