On February 3rd, Schoenherr will present its Roadmap 2011. Now in its fifth edition, the Roadmap is an annual publication which presents an overview from our lawyers of recent and upcoming legal developments in our core practice areas, as well as critical insights and analyses of those developments. This is one of the articles that will appear in the upcoming edition. From February 7th, you can order your own copy of the roadmap on our website: www.schoenherr.eu/roadmap11
Being famous is not so bad, especially for trademarks, unless it leads to genericide.
What is genericide?
The better known a trademark is in the market, the broader its protection. But the situation can arise where a trademark becomes so well known as a brand for a product that it becomes the generic name for all such products no matter who produced them. If a brand loses its distinctiveness and becomes a pure generic term, then it also loses trademark protection. Well known examples of this include Gervais, Escalator, Thermos, Zipper and Band-aid. This is what we call the death of a brand or "genericide".
Avoiding genericide
What can you do to avoid your brand becoming a generic name? Although there is no surefire rule, certain measures can definitely help.
- Do not forget to register your brand as a trademark in the
respective markets in time.
- Always use a generic term for your product besides your
brand.
- Monitor public, competitor and internal use and react when the
brand is used as a generic name.
- Use the ®-sign to make everyone aware of the fact that this
is a registered trademark.
- Never use the brand as a verb (eg "to xerox" instead
of "to copy").
- Never use the brand as a noun ("xeroxes" instead of
"copies").
- Educate the public and members of the trade, e.g. by publishing
special advertisements informing about the trademark protection,
and correct use of, the brand.
- Survey (potential) customers to find out whether your brand is
still regarded as a protected trademark or whether it has become a
generic name.
- Develop guidelines on how to correctly use the trademark and
publish these guidelines internally and for any cooperation
partner.
- Use legal remedies against misuse and generic use of your
trademark.
May your brand be successful, famous and respected, but also well-protected and not generic.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.