As Apple fights with Amazon.com to assert exclusive trademark rights in APP STORE for, ahem, a software application store, it may be a good reminder to trademark owners to formulate a strategy for avoiding the worst fate to befall a trademark…genericide. Yes, it is actually as deadly as it sounds. Genericide occurs when a trademark becomes generic, meaning it is no longer an indicator of the source of a particular product or service, but rather, has become synonymous with its general class.
Trademarks function as indicators of source. In other words, they identify the source from which a product or service originates so that consumers will be able to distinguish a trademark owner’s products and services from another’s, and come to expect a certain level of quality from that product or service. For example, no matter where you purchase a McDonald’s cheeseburger, you can anticipate exactly how it is supposed to look and taste, and it’s not the same as a cheeseburger from Burger King. That’s how a business’ reputation for quality, or its “goodwill” is established.
There are four levels of distinctiveness that fall along a spectrum of trademark strength. The first level, comprising the strongest trademarks are fanciful, or coined terms. Fanciful trademarks have no meaning until they become associated with a product, such as PEPSI cola or XEROX photocopiers. The second strongest is an arbitrary trademark, which is composed of a word that exists, but is then associated with a completely unrelated product or service, like APPLE (how ironic) for computers, or DELTA for an airline. The third strongest is the suggestive trademark, which requires the consumer to use his or her imagination to appreciate the relevance of the trademark in conjunction with the product or service it identifies. COPPERTONE, for example, doesn’t come right out and tell the consumer that the corresponding product is tanning lotion. Finally, descriptive trademarks are the least strong of the four trademark types. In fact, descriptive trademarks are not considered distinctive from the get go, as is the case with the first three trademark types, rather, but they can become distinctive in the minds of the relevant consumer over time, or based on a combination of factors including advertising dollars and unsolicited publicity. TV GUIDE and FROSTED MINI WHEATS are descriptive, because the identify a quality, characteristic, feature or function of the product being offered.
Generic terms do not function as a trademark at all, they simply identify the common name for a product or service, e.g. restaurant, car, coffee, or lipstick. Generic words are available for use by anyone. So how does a trademark lose its distinctiveness and become generic? It’s essentially the result of too much of a good thing, market dominance. In other words, the trademark enjoys significant dominance among competitors so that consumers ultimately identify the trademark as the generic (or common) name of the product or service. For example, aspirin was actually a trademark owned by Bayer AG for acetylsalicylic acid, typically used to reduce fevers and relieve pain. Escalator was originally a trademark for moving stairs offered by the Otis Elevator Company. Yo-yo was a trademark of the Duncan Yo-Yo company. Jell-O is pervasively used to identify gelatin dessert.
There are also trademarks that have come close to genericization, but were saved from certain death thanks to thoughtful brand resurrection campaigns. XEROX went to great lengths to re-train consumers through an extensive advertising campaign to “photocopy” rather than “xerox.” Johnson and Johnson went so far as changing the lyrics to its jingle from “I am stuck on Band-Aids, ‘cause Band-Aid’s stuck on me,” to I am stuck on Band-Aid brand, ‘cause Band-Aid’s stuck on me,” to remind consumers that it’s a BAND-AID brand bandage. Kimberly-Clark gently reminds consumers that KLEENEX tissue is the number one facial tissue brand.
So how do trademark owners maintain the fine balance between cornering the market and keeping their brand from becoming generic? First, proper use of a trademark is key. The trademark should operate as an adjective to modify a noun, e.g. DORITO’S corn chips. Avoid using a trademark as a verb, plural or possessive, unless the trademark itself is in the possessive form. Educate consumers on how to use the trademark in subtle ways, such as in marketing and packaging materials. Even following the trademark with the word brand helps. Trademark owners can also enforce their trademark rights through a variety of available legal means such as infringement, opposition or cancellation actions. Most of all, enlist the aid of a thoughtful, experienced trademark attorney who can help early on in the trademark selection and clearance process, work to obtain exclusive rights for your trademark throughout the country, and ultimately save your brand from an untimely demise.