A cruel irony

It is the dream of any company for their product to become a household name – a product so popular that it deserves its own place in the English Dictionary, such as to ‘Google’ or to ‘Photoshop’. Yet, whilst these levels of popularity may conjure up images of bank vaults filled to the brim with money, they are in fact synonymous with the death of a brand, and the collapse of a business. 

Trademark dilution, or ‘genericide’, is the circumstance in which brands seemingly get too big for their own good. Although a compliment to the success of the product, if it can be proved that consumers use the brand name as an ‘everyday word’ (rather than relating directly to the use of the product) the trademark will be dead, buried and ultimately, worthless. 

History shows numerous examples of companies and their lawyers waging this constant legal battle; with the amount of money at stake, it is hardly surprising. The scale of the issue, however, may be surprising. Have you ever called a Trampoline a ‘rebound tumbler’? Were you aware that Elevator, Aspirin, Heroin, Rollerblade, Yo-Yo, and Thermos were all brand names? For many people, the answer is almost certainly “no”. 

Recently in the US, Tiffany v Costco saw the world-famous jewellery company claim against Costco for an infringement of its trademark by selling ‘Tiffany’ engagement rings. Whilst set for a hearing in mid June, Costco argued that ‘Tiffany’ is in fact now a generic term for the style of rings in question and the District Judge followed that this created a genuine factual dispute – a dispute that, if found in favour of Costco, would render the Tiffany trademark pretty much worthless.

If Google is taking notice, you probably should too…

Despite the historical examples, these ‘genericide’ battles are taking place under the shadow of E-commerce, meaning a number of new threats to trademark infringement. According to the latest WIPO (World Intellectual Property Office) report on global brands, this ever-increasing sphere means that companies need to be even more careful not to have their trademarks diluted. For example, search engines auction off trademarked keywords for the display of adverts to the highest bidder. Although increasing the popularity of the product, this makes the keyword more generic, as displaying adverts unrelated to the trademarked keyword dilutes them. 

According to the WIPO Report, the worlds companies put $466bn into branding in 2011, with forecasts for this figure to rise to over $500bn in the future. Therefore, this investment certainly isn’t one to risk wasting – a fact realised by Google who published their ‘Rules of proper usage’. Whilst most companies would dream of being so popular that their product becomes worthy of a verb in the dictionary, Google wants to protect themselves against the colloquialism of ‘googling’ and ‘to google’ in a ‘common, descriptive or generic meaning’. 

Moreover, it’s not just Google who are jumping on board to protect against genericide. Twitter raised the issue in October 2013, and Adobe produced a document entitled ‘Proper use of the Photoshop trademark’ in which it advises consumers to not use the term ‘Photoshopped’ as a verb, noun, or slang word. 

It’s a ‘necessary evil’, and here’s what you can do to prevent it

Most people will of course ask; will anyone really make a conscious effort to make sure that what they say in relation to Photoshop, Google or Twitter abides by the rules of a mystery attorney? It’s unlikely. But, your trade-marked brand is your badge of exclusivity. If you lose your trademark you lose the protection it provides for your brand. It is for this reason that protecting your trademark is of paramount importance.

Some methods of protection have included direct marketing campaigns, such as that of Xerox in 2003 who stated that ‘when you use Xerox the way you use Aspirin, we get a headache’. Or, the use of ‘brand police’ such as ‘Netnames’ who trawl the Internet for suspected fraudulent or improper trademark use, representing around 25% of the FTSE 100 index of leading UK firms. 

Yet, the best way to fight genericide is to get legal advice from representatives who will be pro-active on your behalf, to raise awareness of the fact you want to protect your trademark. In a recent example, Washington Post writer Gene Weingarten wrote an article in which he stated that Americans should ‘put on a Stetson’ if they wish to feel more American. Whilst a light hearted comment, Weingarten found himself in hot water with the John B Stetson Company for using the brand ‘Stetson’ as a synonym for a hat. Although this may seem like a bit of an overreaction on the part of Stetson, replies from trademark lawyers noted that a main strategy to fight this trademark threat is to be seen to be proactive about it, as to show you care about protecting your trademark. 

Whether you’re looking to register your first trademark or the notoriety of your existing trademark is putting you at risk of making the dictionary, it’s important to think about the possibility of genericide. 

Contact us today to book your free consultation to discuss your legal requirements in further detail, we’ll be delighted to talk to you.

The contents of this article are intended solely for information purposes only and should not be construed as legal advice or opinion in any specific facts or circumstances.

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Ryan Lisk

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Ryan has helped a vast number of businesses protect and control their intellectual property as well as drafting and advising on consumer and commercial contracts.

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