Bolstering Brand Association: Preventing Loss of Trademarks to Genericization

One major concern with successful trademark use, especially in the social media age, is that trademark protections will diminish due to genericization, which is common usage of a mark by the public that is unassociated with the brand. By taking protective measures, including early trademark enforcement and carefully-worded advertising, companies can mitigate and manage risk associated with trademark genericization.

With the digitization of information, along with the related and dramatic increase in availability and accessibility of this information, companies have extraordinary opportunities to spread information about their products and brand to the general public. However, these growing opportunities come with potential problems that must be carefully and cautiously managed by companies in order to mitigate legal risk. One issue of this type, which has grown as rapidly as these opportunities have, is the issue of trademark genericization—sometimes called “genericide” because it marks the “death” of a trademark—where trademarks become generic through excessively common use.

The purpose of a trademark, and the value that confers a trademark, is to indicate the source of a good or service to consumers. However, when a trademark becomes so widely known and used that the mark is associated with the product itself instead of the brand, companies risk losing their trademarks to generalization. For example, when an individual refers to terms like “popsicle” or “Q-tip” they are generally referring to a frozen treat or a cotton swap on a stick, not to Conopco, Inc., the original trademark-owner of both products. Other terms used similarly in this way include trampoline, escalator, band-aid, bubble wrap, frisbee, hula-hoop, jacuzzi, jet ski,  post-it note, and Velcro. These are among the words that the public generally uses to describe products, but whose origins are related to a particular brand and company. Although many of these brands still hold valid trademarks in these words (perhaps in some cases because litigation has not yet ensued), some trademarks like “escalator” have been legally revoked through judicial or agency proceedings.

Especially in light of the social media era, which allows new or popularized terminology to spread at a dramatic speed, using trademarks as part of verbiage or indistinct from the item itself (identifying an item without brand specificity) can lead to rapid use of the mark in common usage. This is especially the case when the trademark more conveniently describes the product than the actual name, which is common for strong trademarks from a marketing perspective, leading to increased risk of diminished trademark protections. A descriptive mark (which with secondary meaning may still confer trademark protections) is even more likely to genericize into a generic mark in light of how quickly and uncontrollably consumer misuse can occur through social media and other online capabilities.

In order to protect trademarks, companies can and should take a variety of planned, strategic efforts to prevent genericization. Some of these efforts include using a general product name in your trademark (i.e., “Smith’s Soda”), not advertising with your trademark in verb form (i.e., “Googling”) to prevent the trademark from being associated with the use of similar products of other brands, making explicit attempts to distinguish the mark and the product in advertising (i.e., the commercial tune identifying the bandage as “band-aid brand”), and taking early legal action against parties who attempt to use the mark as a generic term (as the longer a company waits and the more other companies use it, the more likely the term will become part of common usage). As evident by these protective measures, both external enforcement and internal, proper use are necessary to effectively defend trademarks from genericization.

Genericization should be a primary concern for trademark lawyers, but efforts like these can at least partially ameliorate concerns about diminished future trademark rights. By vigorously and expeditiously enforcing misuse of trademark, either with action against companies or efforts to inform the public, and by cautiously drafting advertising language, to prevent use of a trademark in verbiage or solely-descriptive fashions, companies can mitigate and manage the rapidly-growing risk of genericization in the digital age.