It is often said that fanciful or invented marks make the strongest trademarks. These are marks that are words with no real meaning, such as Exxon. Over time some fanciful marks can develop a very strong connection to a product in the minds of consumers. Although that level of recognition is generally a positive for a brand, these marks can still be vulnerable to becoming generic marks.
A mark becomes generic when the mark becomes the description used by consumers to describe a whole category of products. Examples of former trademarks that are now generic terms in some countries are: escalator, linoleum and aspirin. When this happens, the mark is no longer valid because it is no longer used to differentiate the source of products by consumers.
It is difficult to imagine anything more detrimental to a brand than their most successful trademark being invalidated and opened up for use by their competitors to describe their products as well.
How can a mark be protected against genericisation? Brand owners need to be conscious of the way that they are using the mark. “I love band-aids” should be “I love Band-aid brand bandages”. The text should be offset and a symbol should be used alongside the trademark to denote that it is a registered trademark.
Xerox famously took this one step further and designed an advertising campaign to inform consumers about other marks that had become generic and asked consumers to only use XEROX as a trademark. Their campaign was successful, and asking someone to “Xerox” a document is no longer a common phrase.
This trademark protection can butt up against marketing wisdom, which can view customers’ referencing of their brand as a positive quality of a strong brand. Knowing the ramifications in trademark law for using a brand as a verb is especially important in this age of social media when we are constantly being told to “google it”, “instagram it”, “facebook her” or “tweet him”.
Brand owners should also keep in mind that genericization happens on a country-by-country basis, as cases are brought in different courts in different countries. The way that a particular trademark is used has to be monitored wherever that trademark is used and registered.
A word of caution comes from a recent case where a Canadian court took into account the fact that the mark FRENCH PRESS was denied registration in the US because it described a class of goods and was used by multiple companies. In that case, the use of the term as a generic term in the United States helped to persuade the court to cancel Bodum’s registration for the mark FRENCH PRESS in Canada.