Avoiding Trademark Genericide
Recently, this site commented upon the potential "genericide" of the "Google" trademark, as reflected by the inclusion of the term "google" as a verb in the latest edition of Merriam-Webster’s Collegiate Dictionary. This case should remind trademark owners of the importance of establishing trademark usage guidelines designed to protect the distinctiveness and value of the subject marks.
To avoid the genericide of a specific trademark, a company should:
- Create a trademark and a generic name for new and unfamiliar products. The product many people refer to as a "Band-Aid" is actually correctly described as an "adhesive bandage." "Band-Aid" is a trademark which identifies the source of the particular "adhesive bandage," while "adhesive bandage" is the generic name of the product. Many companies may be able to produce and sell adhesive bandages but only the owner of the "Band-Aid" trademark may produce and sell "Band-Aids."
- Always use the generic name for a product with the trademark. The owner of the "band-aid" trademark refers, and should insist that others refer, to its product as Band-Aid brand adhesive bandages." Consistent use of the trademark or "brand" identifier with the generic name of the product is an effective means of avoiding the effects of genericide.
- Educate consumers and the media on the correct use of the trademark. The trademark owner may wish to use letters or advertisements to educate consumers and the media on the correct use of the trademark and how the trademark is distinguishable from the generic name for the subject product. According to Xooglers, Google has previously attempted to promote the proper usage of the "Google" trademark by running advertisements which described the proper use of the term "Google" ("Please use Google to find it, but not to describe what you did.") and providing examples of proper and improper uses of the mark.
- Aggressively enforce its trademark rights. It is not uncommon for an occasional misuse of a trademark to grow into a systematic use which threatens the distinctiveness and value of the mark. Though litigation is certainly not called for in every case, a trademark owner must actively and aggressively police the use of its mark to protect its value.
As always, readers interested in drafting appropriate trademark usage guidelines should seek the advice of a competent and properly-license attorney. Failure to do so may result in the creation of guidelines which, even if followed, do nothing to protect the subject marks.
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