How to Prevent Brands from Going Wild

This publication supplements an article named, “Brands Gone Wild” originally posted by amagazi, a Houston-based advertising agency.

In “Brands Gone Wild,” amagazi wrote about genericide and some of the brands that have fallen victim to it. But what is a brand to do to avoid this not-so-positive fate?

Genericide is a form of abandonment, whereby a trademark no longer distinguishes the goods or services of one party from those of another. In other words, the trademark now names a good or service, instead of identifying the sourceof the good or service. Examples include Aspirin, Thermos, and Escalator.

To prevent genericide, in all advertisements and communications the trademark holder should adhere to these rules:

• Identify the trademark as a trademark by using all capital letters, a distinctive typeface, quotes, or the appropriate symbol (e.g., TRADEMARK, Trademark, “Trademark,” Trademark®, Trademark™).

• Do not use the trademark as the name of the product or service. Instead, use the trademark to identify the source. One way this can be done is by accompanying the trademark with the description of the product or service (e.g., Levi’s jeans, Q-Tips cotton swabs). This should also be done when showing plurality (e.g., two Gillette razors).

• Do not use the trademark as a noun or a verb; rather, use the trademark as an adjective (e.g., Xerox copier).

• Police others’ uses of the trademark and object to any misuses. Send letters objecting and keep records of the responses. If necessary, pursue litigation and injunctive relief.

The trademark holder may also want to:

• Include the word “brand” after the trademark. Johnson & Johnson ran ads saying “I am stuck on Band-Aids brand cause Band-Aid’s stuck on me.”

• Educate the public on the proper usage of trademark. Kimberly-Clark ran ads stating “‘Kleenex’ is a brand name . . . and should always be followed by an ® and the word ‘Tissue.’ [Kleenex® Brand Tissue] Help us keep our identity, ours.” Xerox ran similar ads stating, “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”

A business’s intellectual property is oftentimes its most valuable asset, and obtaining registration of a trademark is just the beginning. The trademark must be nourished and protected so as to avoid being genericized.

Johnsen Law can register your trademarks and advise on copyrights and other intellectual property matters. Contact our law office today: (832) 786–8646.