Status in the U.S.
Status in Canada
|Thermos||Vacuum bottles||Generic||Registered trademark|
|Aspirin||Acetylsalicylic acid tablets||Generic||Registered trademark|
|Cellophane||Transparent cellulose sheets||Generic||Registered trademark|
|Escalator||Moving stair case||Generic||Generic|
Trademarks: Mis-use it and (potentially) lose it
We recently came across a news article about the meteoric rise and current success of a young, home-grown online bartering service business. Like many other successful businesses, this business also happens to own a rather catchy trademark – the monosyllabic kind that sticks out and resonates well with consumers. Reading about the success of a Canadian business always invokes a sense of pride. After all, Canadians are an innovative bunch, and such business success stories affirm that already known fact!
However, the sentence that appeared directly below the title of the article was the one that caught our eyes. That sentence noted that users of the business’s services have turned to “verbifying” that business’s trademark. For example, instead of saying “I’m going to exchange object X for object Y on the [business’s trademark] online bartering platform”, users apparently say “I’m going to [business’s trademark] object X for object Y”. Seems like consumers have really taken a shine to the business!
At first blush, use of a trademark by the public as a verb to describe a service, or as a synonym for a good, may sound like a great thing: your company is so successful that the public equates your trademark with the very goods and services that your company offers. Your trademark is at the tip of everyone’s tongue! You are getting free marketing! Your competitors appear to have some catching up to do. However, the purpose of a trademark is to distinguish a business’s goods/services from the goods/services of others. So, in the eyes of trademark law, extensive and prolonged common mis-use of a trademark in the above manners decreases the value and strength of the trademark: it loses distinctiveness over time; industry eventually swallows up the mis-used trademark and may even adopt it as a standard industry term. The trademark becomes generic. What once may have been registrable may now be unregistrable or subject to invalidation if already registered. At that point, the trademark owner, unfortunately, forfeits to the industry (and to its competitors) a once valuable asset.
Very recently, a large multinational company that offers internet search engine services (among other things) managed to escape the unfortunate fate of losing its trademark in the United States to genericism. But as can be seen from below, not all trademark owners are as fortunate. And even then, the loss of trademark rights may be jurisdiction-dependent:
Indeed, mismanagement of assets may lead to the unintended and unrecoverable loss of those assets. A trademark is no different: it too is an asset and should be managed appropriately. Through thoughtful business practices, you too may be able to build and protect that next successful brand. Below are some suggestions as to how that may be achieved.
1. Choose a trademark that is inherently distinctive
The ultimate value of a trademark is part nature and part nurture. Weak trademarks (e.g. those that are descriptive of the goods/services with which they are associated) often take time and good nurturing (i.e. good business practices) before becoming valuable. Strong trademarks (e.g.terms that are coined or totally unrelated with the goods/services yet still associated therewith) are inherently distinctive as trademarks, yet may still fall victim to genericism if not properly managed or if used improperly.
While there is no one path to success, nascent start-up companies are urged to consider: (i) avoiding weak trademarks that could be taken as describing your goods and/or services; and (ii) choosing a strong trademark that is “made up” (e.g. Xerox®), a portmanteau (e.g. Microsoft®), or clearly not related to your offered goods/services (e.g. Blackberry®).
Takeaway: Strong trademarks inherently stand out. Weak trademarks don’t.
2. Identify your trademark as a TRADEMARKTM
How you portray your trademark to the world does matter. In the digital age, consumers often first encounter your trademark on your website – perhaps in the description section of your business. To bolster protection for your trademark, and to confirm in the eyes of the consumer that your trademark is a trademark, consider the following:
- identify your trademark as a trademark by giving proper notice (e.g.through the use of “TM” for unregistered trademarks, or “®” for registered trademarks);
- use your trademark in conjunction with the generic name of the good or service (e.g. “Welcome to the [business’s trademark]TM online bartering platform”; “[business’s trademark]TM facial tissues are soft and do not chafe your cheeks);
- if your trademark is a “word mark” (i.e. no design or stylistic element, and just letters or words strung together), further distinguish it from the rest of the sentence by using, for example, uppercase lettering (e.g. “Welcome to the [BUSINESS’S TRADEMARK]TM internet search engine”; “[BUSINESS’S TRADEMARK]TM insulated bottles keep your tea hot, and your water cold”).
Takeaway: First impressions do matter. It is important to clearly show the world what your trademark is and how to properly use it.
3. Be proactive in protecting your assets
One example of being proactive is to apply to register your trademark. For unregistered (common law) trademarks, the scope of protection may be limited to its geographic scope of use; in addition, should a dispute arise, the initial onus may be on you to demonstrate the validity of your trademark. Sometimes, a third-party may apply to register a trademark that is the same as or confusingly similar with your unregistered trademark; the cost of opposing such a third-party application would far exceed the cost that you would have otherwise spent had you applied to register your trademark in the first place. A trademark registration, on the other hand, affords you (among other benefits) national protection for a trademark in association with an approved list of goods and services.
Preparing a trademark application is deceptively simple, and an inadvertent error in the initial trademark application may prove costly in, or even fatal to, securing a trademark registration. While engaging a trademark professional to assist in the proper preparation of a trademark application has its cost, the cost of correcting (if possible) and/or defending a mis-prepared application may be even greater.
Also, if other people are mis-using your trademark, object to that mis-use and make that objection known. Depending on the magnitude and kind of mis-use, various legal remedies may be available.
Takeaway: Your trademark is an asset; it is up to you to protect it.
4. Educate personnel and partners on how to use your trademark
As your business grows, you may engage employees, contractors, distributors, dealers, or other entities to help make your business operations proceed more smoothly. Each of those entities is a player in the success of your business. As such, each of them should be on‑boarded as to how your trademark is to be portrayed or depicted in association with your goods/services. They will be interacting with your customers and the public at large, and should know how to use and reinforce the proper usage of your trademark. Often, the strength of a trademark is not eroded away by malicious intent, but rather by mis-use of the trademark by the public or its very owner (and associated entities).
Takeaway: Education is important. Take time to talk to your employees and associates about protecting your business’s assets. Don’t forget to educate yourself too!
5. Other means of protection
The above points are by no means an exhaustive list of the ways in which you can better protect the strength and value of your trademark. But they hopefully start the conversation about thoughtful business practices.
In any event, be proactive in understanding how to best protect your trademark and business brand. The concept of trademarks is deceptively simple, and it is this deceptive simplicity that unfortunately trips up businesses at inopportune times. In the trademarks world, an ounce of prevention is truly worth a pound of cure.