Special Report - Part 2: On Your Mark -- Strategies for protecting trademarks from becoming generic terms

Protecting a brand trademark from becoming part of the common vernacular isn't an issue just for large corporations like Kleenex and Xerox. In Part 1 of our special report on Jan. 30, 2009, SNEWS® examined how outdoor industry companies navigate the turbulent waters of brand trademarks to protect them from becoming generic terms, also known as "genericide." Click here to read Special Report - Part 1: On Your Mark -- Protect trademarks from being slaughtered by 'genericide'. In today’s Part 2, we talk to trademark experts, as well as companies that have dealt with legal battles, about strategies for both supplies and retailers to employ to protect a brand and trademark.

When determining whether or not a trademark name is generic, courts ask a fundamental question: Can you trace the trademarked word to a specific source?

Swiss Army is a term synonymous with a multifunction tool, but can you trace the words "Swiss Army" to a particular company? For a long time, that was a big question. Since the 1890s, Victorinox (now Victorinox Swiss Army) and Wenger both produced red-handled multifunction tools for the Swiss government, and neither could claim the sole trademark, as you couldn't trace the product to one manufacturing source.

Do’s and Don’ts to keep your trademark in good shape

Do:
>> Use a trademark in distinct type – Capitalize the entire trademark or set it off from other words through bold or italicized typeface: MIDAS® not Midas.

>> Use a mark as a proper adjective – Associate the mark with the descriptive name of the product or service in all labeling and sales promotional pieces, feature or technical articles, published reports and news releases: MEDTRONIC® pacemakers.

>> Use a mark with notice of its status – If the mark is registered with the U.S. Patent and Trademark Office, use one of the following with each mark: ® or TM (trademark) or SM (service mark).

Don’t:

>> Use a mark as a noun – Wrong: LR Mate® keeps costs under control.

>> Use a mark as a verb – Wrong: Let’s go Rollerblading.

>> Change a mark’s form, such as adding hyphens – Wrong: Buffalo-Wild-Wings®.

>> Use a mark in a possessive form – When it comes to waterproofing technology, Event’s
popularity has really grown.

>> Use a mark to modify or describe any words other than the appropriate generic or descriptive name – Wrong: Trail runners stay hydrated when they use a Camelbak system. Right: The Camelbak Octane XC hydration pack is convenient for trail runners.

>> Abbreviate a mark – Wrong: GSI. Right: GSI Commerce.

>> Wrongly identify a mark as registered unless it is filed with the U.S. Patent and Trademark Office – Wrong: Indoor Studio Cycles® pedal as well as any indoor bikes.

Information courtesy of Intellectual Property Attorney Dean Karau (dkarau@fredlaw.com)

With no company holding possession of the trademark, other knife manufacturers perceived that the Swiss Army term was generic. In the early 1990s, the Arrow Trading Company began to import pocketknives made in China that had red handles emblazoned with the words "Swiss Army." In 1992, Victorinox sued Arrow for false advertising and unfair competition.

"This was hard-fought litigation that went on for 10 years," said David Weild, a lawyer with Edwards Angell Palmer & Dodge LLP, which represents Victorinox Swiss Army. In the end, the court determined that Victorinox and Wenger could be considered the source for Swiss Army knives, because the term had become synonymous with high-quality tools made by these particular manufacturers. In 2004, Victorinox and Wenger were granted trademarks for Swiss Army, and in 2005 Victorinox purchased Wenger, further establishing itself as a single source.

Yes, the legal wrangling over trademarks can be confusing, but it just goes to show the headaches that can occur when a trademark name is not solidly connected to a particular company. If a company might be faced with a decade of litigation, it makes sense to aggressively prevent generic use of a brand name.

Bending over backward
Some companies go to great lengths to prevent genericide, including behemoth companies like Xerox. But does such a large company really have to worry about losing its trademark? Well, yes.

The Xerox Corp. had watched its trademark name being used synonymously for "photocopying." The company successfully addressed it with an extensive public relations campaign asking consumers to "photocopy" rather than "Xerox" documents. The company won the battle…mostly. It lost the campaign for the use of the word in Russian, Bulgarian, Romanian and Portuguese, in which Xerox is now a genericized term. Even recently -- the battle never is over, you see -- the company addressed the situation again, placing an advertisement in the November 2007 issue of the ABA Journal of the American Bar Association. With lawyers reading the publication, it's certainly important to keep awareness high. The ad showed a zipper placed over the word Xerox on the page. Below that was the following copy: "If you use 'Xerox' the way you use 'zipper' our trademark could be left wide open."

Eye-catching, yes? And, then to explain it further, came this: "No one likes to leave their name open to misuse. Which is what happens when you use our name in a generic manner. Basically you're putting it in a compromising position, which could cause it to lose its trademark status. That's what happened to the name 'zipper' years ago. So when you use our name, please use it as an adjective to identify our products and services, such as 'Xerox copiers.' Never as a verb: 'to Xerox' in place of 'to copy,' or as a noun: 'Xeroxes' in place of 'copies.' Now that you're aware of all this, that should just about zip things up. Thanks."

The Xerox ad brings up an important issue in preserving a trademark. A company -- and, of course, its retailers -- is not only required to protect its trademark, but it must not contribute to its use as a generic term.

Be careful what you say
"The reason a term becomes generic is due to the tension between marketing and trademark law," said Dean Karau, an intellectual property lawyer with the Fredrickson & Byron firm in Minneapolis, Minn. "Trademark law respects and gives right to distinctive terms that can help the public distinguish the source of products. Marketing oftentimes wants to be descriptive. And when you use a trademark descriptively, the public becomes conditioned to use it in the same way. That's when it morphs from a trademark to a generic term."

To understand this better, simply look at the company Google and what has happened to its name. For a modern success story, it's also a prime example of a company that might be putting its trademark in jeopardy. Unless you've been stranded on an island for the past few years, you know that Google has quickly morphed into a generic term for "search" on the Internet. In 2006, Google allowed Pontiac to run a TV ad with a voiceover that said, "Don't take our word for it, Google 'Pontiac' to find out."

When Google allowed its trademark to be used as a verb, it effectively endorsed the notion that its trademark was a generic term for performing an Internet search. You'd think the Google lawyers would have known better. Complicating matters, in 2006 the Oxford English Dictionary actually included Google as a verb.

Now, we know what you're thinking: Google is a big company that has such command of the search engine market that no competitor could challenge its trademark. Sure, that's the case now, but things change, especially when it comes to the high-tech world.

"Where they have to be worried is, as the search engine field levels out and they get serious competitors, they may have problems," said Karau. Google does have the advantage because it was the first highly recognized search engine and ruled the market early.

"Google became the leader so quickly, even though it is being used as a verb and noun -- every wrong way you can use it -- people still know exactly (what brand) you're talking about," said Karau.

W.L. Gore, GU and other outdoor trademarks such as CamelBak have had a similar advantage. These brands launched product categories, and they have gained some advantage by becoming synonymous with waterproof apparel, energy gels and hydration systems.

"If a customer is in a retail store and sees a selection of eight varieties of energy gels, they'll likely go with GU because the brand is safe and familiar," said Holly Bennett, senior marketing manager at energy-gel maker GU.

But Steve Shuster, global brand manager of W.L. Gore, warned that consumers can quickly shift their loyalty. "I could be aware of a lot of different brands, but if I don't understand the essence of the brand I can be moved off that," he said. And this really gets to the heart of genericide. When consumers no longer equate a trademark with a certain manufacturer's product with distinguishable traits or quality, then words, like Xerox or Thermos did, become nothing more than common lingo.

"We want to create a unique identity so consumers go into a store insisting on the Gore-Tex brand," said Shuster. "Having that leadership position is advantageous, but we need to make sure it's understood that not all products are created equally."

If you doubt the potential damage of genericide, just browse the drugstore aisles for "aspirin" -- yeah that was once a trademark name too. We swear. Google it and check for yourself. --Marcus Woolf

Missed Part 1? Click here to read that Jan. 30, 2009 installment.