Posted on 10/24/2016 12:20:07 AM By John L. Ambrogi

Formica®, Kleenex®, XEROX®, Jell-O®, Rollerblade®, Polaroid®, POST-IT®, JETSKI®, Jacuzzi®, Google® and Coke®. What do all of these famous trademarks have in common? They are often used by consumers not in a trademark sense, but as the name of the product itself. Can you get me a Kleenex? I’m going Rollerblading. I need a Band-Aid. Can I have a Coke with my burger? I am going to go soak in the Jacuzzi. Let me go “Google it”. We have all been guilty of using federally registered trademarks in their “generic” sense.

While valid trademarks identify the source of goods or services, a “generic” term merely specifies the genus of which the particular product is a species. Generic terms are created by consumers identifying a category of goods through the use of the trademark. Generally speaking, a generic term or word is not subject to registration as a trademark or trade name, and the fact that a word or term has become generic by use may support the cancellation of the trademark.

A non-generic, valid trademark can become generic when the public uses the word as an indication of the product itself, rather than as an indication of the origin of the product. For instance, the word aspirin was once a registered trademark until the public transformed it by using it in its generic sense. A valid trademark must have a source-denoting function. Consumers must associate the trademark with the manufacturer of the product, rather than with the particular type of product.

The classic test of whether a trademark has become a generic name was stated by Judge Learned Hand: “What do the buyers understand by the word for whose use the parties are contending?” The answer to this question is not usually so clear. A court may find that some of the purchasing public regards the word as a trademark, while others regard it as a generic name. In other words, the trademark may have a dual meaning to the public. The dual meaning concept was incorporated into the Lanham Act as a part of the Trademark Clarification Act of 1984. Section 14(3) now reads, “A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service.”

In competitive product categories (such as automobiles, beer and soft drinks), it is extraordinarily difficult to establish that a trademark has become generic. A trademark does not become legally generic simply because it has some significance to the purchasing public as the common name of the product. To become generic, its principal significance (that is, its significance to a majority of the purchasing public) must be as a designation of the product rather than of the source.

This process (which is sometimes referred to as “genericide”) has occurred to the following trademarks that have become part of our standard lexicon: dry ice, aspirin, cellophane, cola, dos, escalator, fontina, gold card, hoagie, thermos, and trampoline, among others. The transformation to genericness almost occurred to (and still may happen) to Xerox®, Polaroid®, and Kleenex®.

The value of a trademark to its owner is consumer recognition – the greater the number of consumers that come to know a specific product by a certain trademark the better – to a degree. The trademark owner does not want its valuable trademark to become the generic reference for the product. Formica® is a brand of countertop, Kleenex® is a brand of facial tissue, Rollerblade® is a brand of in-line skates, Coke® is a brand of soda-pop.

What can you do to create a strong trademark that the public does not kill with adoration through inappropriate generic usage? Steps can be taken in the trademark selection stage and in using the trademark to maintain maximum legal protection and reduce the risk that the trademark will become a generic name. These are among some of the general principles that should be considered in the selection and maintenance of trademarks:

  • Select arbitrary and distinctive trademarks. Avoid descriptive terms, surnames, and terms of geographical meaning.
  • Practice good trademark maintenance. Apply for and obtain federal registration as soon as possible. Also, file all the necessary affidavits and renewals prior to their deadlines.
  • Use the trademark on the product and in advertising in association with the generic name for the product,, e.g., as in “Rollerblade® in-line skates”, “Post-It® brand notes”, “Xerox® copies" and "Levi’s® jeans.”
  • Educate the public to use the mark properly and to use the generic name – not the trademark – as the name for the product. This is an especially critical objective where the product is highly unique, is patented, or does not have a generally accepted generic name. This is exactly what Xerox® had to do over the years since they came dangerously close to losing their mark – they educated the public to use “copy” or “duplicate” not “make me a Xerox®”. The trademark must be used as a trademark.
  • Do not use the possessive form of the trademark (Teflon’s surface, Coke’s taste), or the plural form (Band-Aids, Land-Rovers), or as a verb (to Xerox), or by using prefixes, suffixes, additional or deletions to the trademark.
  • Make the trademark look different from surrounding text so the public will focus on it as a trademark. A distinctive typeface, quotation marks, solid capital letters or the capitalization of the first letter might be used. If registered with the United States Patent and Trademark Office, make sure to use the registration symbols (®, Reg. U.S. Pat. Off., Registered in U.S. Patent Office). You should use “™” or an asterisk (*) indicating “A trademark of X Company” for any unregistered marks. The word “brand” may also be used to emphasize the trademark character of the particular term, as in “Scotch® brand cellophane tape” and “Formica® brand countertops.”
  • Though difficult for smaller companies with only one product line, if possible, use the mark on several different, but related, products to help strengthen the mark and avoid direct association to one product (e.g., BAND-AID® brand adhesive bandages and spray antiseptic, VASELINE® brand petroleum jelly and hair tonic).
  • Protect your trademark from others by instituting an aggressive trademark enforcement program to challenge and, if necessary, seek injunctive relief in court against infringers of the mark. The program should also involve opposing or canceling federal registration of confusingly similar marks in the Patent and Trademark Office. The trademark owner must seek out and challenge misuse of its mark by the public, the industry, the Patent and Trademark Office, trade and consumer publications, and others.

So, next time you get a taste for some Jell-O® brand gelatin dessert or a Coke® brand soda and decide to strap on your Rollerblade® brand in-line skates to head down to the park, don’t forget to have with you some Band-Aid® brand bandages and Kleenex® brand facial tissues in hand, though you might also want to take your Polaroid® brand camera to take pictures of the scenery along the way!

Brand, Trademark