Registering your trademark with the United States Patent and Trademark Office is only the first step in creating and maintaining your trademark. Brand identity, and the ability to legally protect it, requires policing, proper usage and maintaining your mark. A company must be careful to look at how it and third parties are using the marks and trade names. If a trademark is not used correctly, it can become generic and lose its protected status. When a federally registered trademark is later deemed generic, the U.S. Patent and Trademark Office will cancel or invalidate the registration. Anyone is then free to use the term without fear of a trademark infringement lawsuit.
Recently, Apple was denied a trademark on its iPad Mini. The Trademark Examiner found that “i”, “pad” and “mini” were all descriptive and even as a composite combined term, still was more descriptive of the product that brand identifying. Somewhere along the way, “iPad” apparently lost its brand identifying meaning to the public. “Pad” became synonymous with “tablet computer.”
This genericism problem also happened recently with Jeb & Terry’s Ice Cream Company’s frozen treat they call “Ice Glace.” Competitors entered the market, and within a few years, a number of ice cream companies were making products similar to “Ice Glace.” Restaurants offered “Ice Glace” on their dessert menu, even though they served several different brands of the treat. Supermarkets began dedicating sections of their freezers to the product, referring to this as the “Ice Glace Section.” This case was similar to the Thermos case where the court told us that the trademark holder’s effort to prevent genericism of a mark is not relevant. In that case, the court explained “[T]here was little they could do to prevent the public from using ‘thermos’ in a generic rather than a trademark sense. And whether the appropriation by the public was due to highly successful educational and advertising campaigns or to lack of diligence in policing or not is of no consequence; the fact is that the word ‘thermos’ had entered the public domain beyond recall.”
I suspect these factors are at work in the Apple iPad Mini case. It is the great marketing that ended up dooming their trademark. The good news is that the term is a household word. The bad news is that it may have entered the public domain and lost its protected status.
Personally, I believe Apple’s attorneys can make a strong showing that the term has a brand identifying function. I suspect they will interpose an argument in response to the Examiner. Surveys and marketing data are likely to prove that to be the case. Whether the trademark application ultimately is allowed does not detract from the important lesson for trademark owners.
What steps a company can take to try to “rescue” its mark?
Use a generic descriptor. It’s human nature to make things simple. We use brand names as generic nouns because it’s easier that way. Consumers take a top-of-mind example of a product and use it to refer to all similar products in the category. By pairing your trademarked name with a descriptive phrase, you can prevent it from becoming a generic noun. Consider “Jell-O® brand gelatin,” where “brand gelatin” clearly differentiates name and generic term. Xerox successfully did this with Xerox® brand photocopy. By using this entire phrase consistently, a company can prevents its brand mark from becoming genericized. Johnson & Johnson changed their ad campaign 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.”
Where main brands are being used in combination with sub-brands, it is important to ensure that each brand retains its separate identity and that the sub-brand is not confused with the product description.
No: Hersheys® Kisses®
Yes: Kisses® chocolate candies from Hersheys®
Whenever possible, make your mark stand out. To make clear to the reader that a terms is a brand mark, make it stand out from the words surrounding it. Using capital letters, bold type, color, quotation marks or some combination of these elements.
Create usage standards. Establish guidelines for how your brand name is used. Be sure it is used with trademark designation (TM or ®) and that it is used correctly. If it is a stylized mark, be sure it is consistently the correct design and colors if they are part of the mark. These should be included in your company materials for distributors, resellers and others using your mark. I also recommend that you post on your company website so they can be referenced easily by users. This elevates its status in the minds of internal and external audiences.
Use the mark correctly yourself. Educate your company employees and consultants, especially your marketing copywriters, to never, ever use your trademarked name as a generic noun or verb. Trademarks are adjectives, not nouns and verbs. Even making it plural or possessive presents a risk. It is a Xerox brand copy, not a “Xerox” and you did not just “Xerox it.” A trade mark identifies a particular brand of some product; it is not the name of the product itself and therefore is not a noun. If you are not sure whether you have used a trade mark as an adjective, try removing the trade mark from the sentence. If the sentence still makes sense you have probably used the trade mark correctly.
Never vary, mis-spell or truncate your brand names. If you alter, distort, re-design or produce your brand name using colors or letters other than those specified in your current brand name/logo registration and usage standards. Even small variations could jeopardize the protection of the brands and/or cause confusion for your customers.
Extend the meaning. This might seem counterintuitive, but the more different types of products a brand name represents, the less likely it is to become a generic term. Band-Aid did this by expanding its product family to include foot care products and antiseptic washes. Now the brand name Band-Aid represents more than just adhesive bandages. It is a brand standard within a category.
Reinforce the general term. Educate the public and your external users (licensees, manufacturers, distributors and resellers). Periodically survey the internet to see how the mark is used. Request web page authors, dictionary editors and/or the general public to stop using your trademark incorrectly and to begin using it properly.
Use it or lose it. A trademark gains legal strength the more often it is used. Use it. Use it consistently according to the guidelines you’ve created. Actively protect your trademarked name. Protect it against infringement.
Consulting with an experienced trademark attorney can help you build and protect strong brand equity for your business.