This document provides information about trademarks, including what they are, common types of trademarks, trademark rights, and the process of trademark generification where a trademark becomes a generic term. It discusses how generification can diminish trademark rights and shares examples of trademarks that became generic names. Strategies are presented for trademark owners to prevent generification, like educating partners on proper usage and using brand descriptors. Famous brand examples like Coca-Cola and their trademark protection efforts are also examined.

2. ®
TM SM
...are all signs you probably notice while
shopping for groceries? Do you know how
are they called?

3. trademark(s)
...ok, but what is a trademark?

4. sound
image
word
slogan
name
logotype
symbol
Trademark is a distinctive sign that identifies certain goods or
design
services as those produced or provided by a specific person or
brand enterprise, and separates them from other goods or services.
phrase The words served around this text can all be considered as
potential trademarks.
color

5. ...as soon as trademarks are launched on the market, they are
provided with legal rights.
One of those rights is called trademark dilution – a trademark
law concept giving the owner of a famous trademark standing to
forbid others from using that mark in a way that would lessen its
uniqueness (e.g. many “variations” of Coca Cola).
These rights must be proactively protected and renewed during
years (depending on the country laws).

6. What’s the average age of
a trademark?
There is no rule. Some trademarks are more than 100 years old,
but some of them disappear from the market really fast.
Nowdays, the biggest trademark threat is a process called
trademark generification.

7. 1366. 1383.
1874. 1893.

8. The unfamous trademark
generification
Trademark generification, also known as a trademark erosion, is
a process by which trademark rights are diminished or lost as a
result of common use in the marketplace. The trademark name
becomes so common that it starts being used as a common
name and the company fails in preventing its (mis)use.

9. Why is it so bad?
When your trademark becomes genericised you, the owner,
lose every right on it:
– you can no longer register and protect that name
– everyone can use your trademark
– the ability to control qulity of the new products that appear
under the name is lost
– you can not extend your business and develope some new
products under that name because now it becomes associated
with one product only
– competition can also use your trademark - on their behalf or
negative advertising

10. How does it happen?
It is said that every trademark is balancing somewhere between
distinctive and generic. But all trademarks can be classified by one
of these groups:
Arbitrary: meaning not related to the nature of the product/service
Fanciful: original and having little if any reference to the nature of the
product/service
Suggestive: having primarily trademark significance but with suggestion as
to nature of product
Descriptive: not just suggesting, but actually describing the product or
service, yet still understood as indicating source
Merely descriptive: having almost entirely reference to the product or
service but capable of becoming “distinctive”.
A trademark is said to be genericized when it began as distinctive
but has changed in meaning to become generic.

11. Even though some trademarks have predispositions to become
genericised, in general this can happen due to several reasons:
1. Patent generification
When patented, the invention becomes widely known under that specific
name, and since it’s the only product of that kind in the market (patent laws),
people start to associate the name with the product. When the patent rights
expire, new similar products arrive, but people still remember the original
patent name and use it as a generic name.
2. Bad marketing
Competition can erode the original trademark through some negative
marketing, specifically advertising.
3. Generification due to uncontrollable usage of the name
By overusing the trademark name in inappropriate ways, we dilute the
trademark rights. Examples are words like “google”, “roller-blading” etc.
4. Generification as a result of the market dominance
When trademark acquires certain popularity it might become dominant on
the market for that certain niche and therefore people might associate it with
a certain product.

12. In the USA there is a Primary Trademark Meaning test invented by
judge named Learned Hand. Test was made to explore and define
the relationship between the primary trademark meaning and the
public opinion.
While the trademark name is publicy and exclusively associated
with the product or the products owner, the trademark rights are
safe. If the trademark is not associated with a certain product nor
the owner of the brand, the trademark owner loses his/hers rights.
This happened to Bayer AG with Aspirin in USA. Aspirin is now a
genericised trademark.

13. Situation in Europe is a bit different. While in USA the loss of
trademark rights in irreversible, in Europe the owner might get
his rights back if the trademark once again becomes associated
with the product or the owner (through advertising).
Since 2003 Protected Designation of Origin exists in EU and it
restricts the use of region names as trademarks for specialty
food and drink to manufactures from the region. Examples are
products like Parmesan, Roquefort, Feta cheese, Scotch whisky...

14. How can you save
your trademark from
becoming generic?
For starters you can learn from others.

15. 1. Educate your business partners and clients about your trademark
rights and a propper usage.
Learn from LEGO. In the early 70s and 80s they asked their buyers to
use expressions like LEGO blocks and LEGO toys instead of LEGOS. The
word LEGOS represented a huge problem in USA where it is common to
add the letter “s” to pretty much everything. To fight that, the company
bought the www.legos.com domain that warns you about being on the
wrong site and then redirects..

16. 2. Avoid using trademark name in a generic context
This happened to Xerox Corporation. Back in the days when they
lead the market with their photocopy machines everyone “xeroxed”
instead of “photocopied”. Courts were visited, letters were written
and in the end they did a campaign pleading to people to help them
save their trademark. They actually saved it, although we must say
that the verb “xerox” is still part of the Oxford English dictionary as a
synonim for photocopying.

17. 3. Use the word “brand” next to your brand name
This is quite common with famous brands, good example is
Johnson & Johnson who even changed their campaign lyrics from
“I am stuck on BAND-AIDs, ‘cause BAND-AID’s stuck on me” into “I
am stuck on BAND-AID brand, ‘cause BAND-AID’s stuck on me.”
http://www.youtube.com/watch?v=gVtmVlV7YEw&feature=related

18. 4. Use a generic descriptor with your brand name
Many companies used this to protect their trademarks. One of
them is Kleenex who incorporated “tissues” to their brand name.

19. 5. Invent a new generic name for your product
Remember when everyone was rollerblading? Well, not anymore.
Rollerblade Company invented the “in-line skating” term which
everyone more or less accepted. Same thing happened to
Nintendo who stopped their trademark generic use by introducing
the term “game console”.

20. ...
Pharmacy industry has its own way of protecting their trademarks.
They produce generic names that are based on chemical ingredients
and in that way save their brand names.

21. Coca-Cola experience &
a word from Google

22. As one of the oldest and todays most powerful brand,
Coca-Cola has an interesting history in protecting its trademark.
Back in the days they had a problem with the competition that
imitated their recipe.
They did series of camqapaigns with slogans like:
Call it by full name. Nicknames encourage substitution.
Demand the genuine by full name.
Coca-Cola. It’s the real thing.

24. In 1886 Coca-cola drink got registered as a trademark.
In 1893 The Coca-Cola logo got registered as a trademark and has
since become the brand’s corporate identity.
In 1935 the name “Coke” was registered as a trademark
In 1977 the now-familiar contour bottle shape was granted
registration as a trademark
http://www.thecoca-colacompany/heritage/pdf/cokelore/Heritage_CokeLore_trademarkchronology.pdf

25. Today Coca-Cola has such a strong trademark that it went
beyond becoming generic, and perhaps beyond being too
popular. When they first introduced the word “Coke” it
could be used as a substitute for Coca-Cola. Then they used
the generic name and used it as a brand in 1985. with a
giant campaign screaming “Coke is it”, while introducing
“cola drink” as a generic name.
The new coke wasn’t that successful, but still remained on
the market as a Diet Coke. It is quite nice when you can
play with your own trademark without any severe damage.

26. Google was one of the first in recent history that really
got the public attention when the company’s lawyers sent
out warning letters and emails to those who publicly used
the word “google” as a synonim for “search”. Everyone
was stunned by this harsh reaction from such a liberal
company, but the Google kept on fighting for its name.

27. Battle was however lead in a specific Google manner. As
examples of appropriate and inappropriate brand name
usage you could find some interesting sentences like:
Appropriate: He ego-surfs on the Google search engine to
see if he’s listed in the results.
Inappropriate: He googles himself.
Appropriate: I ran a Google search to check out that guy
from the party.
Inappropriate: I googled that hottie.

28. In 2006 the saga continued when the verb “google” was
included into editions of Merriam-Webster and Oxford
English Dictionary. Good thing is that verb doesn’t stand
for search but “to use the Google search engine to find
information about (as a person) on the World Wide Web”.
Because of that, this interesting information about “google”
- word from a dictionary can now be found on Googles
official site.

29. Just a shortlist of generic
& potentionally generic
trademarks.
Look for the bold ones.

30. Aspirin Ajax Hi-lighter (Hi-Liter) Ouija SPAM
Brassiere Alka Seltzer Hoover Oreo Speedo
Cellophane Aqua-Lung Hula Hoop Pablum Stetson
Celluloid Baggies Jacuzzi Perspex Styrofoam
Corselet (Corselette) Band Aid Jaws of Life PG Superglue
Escalator Benzedrine JCB Photoshop Tabasco
Granola Breathalyzer Jeep Ping-Pong Taser
Heroin Brillo Pad Jet Ski Playbill TelePrompTer
Linoleum Bubble Wrap Jetway Plexiglas Teflon
Petrol Chap Stick Cheetos Jell-O Portacabin Thermos
Thermos Cheerios Jockey Shorts Post-It Tippex
Yo-Yo Coke Kleenex Polaroid TiVo
ZIP-code Cool-Aid (Kool-Aid) Krazy Glue Popsicle Tupperware
Zipper Demerol Laundromat Prozac Tylenol
Dictaphone LEGO Q-tips UGG
Digitron Levi’s Rollerblade Valium
Dixie cups Liquid Paper Roquefort Vaseline
Dumpster Life Savers Saran or Saranwrap VHS
Ethernet Magic Marker Scotch tape Viagra
Fiberglass Milk-Bone Scrabble Walkman
Freon Moxie Sellotape Windbreaker
Frisbee Muzak Sharpie Windex
Gilette Nikko pen Shop-Vac Wite-Out
Google Nilla Wafers Skivvies Xerox
GoKart Novocain Spackle ...
*only the bold words are genericised trademarks (USA mostly), the rest of the words are used generically but haven’t lost their rights

31. As time passes by, nothing really changed in the world of
brands. Secured trademark rights are still on top of their owners
wishlists, and keeping their trademarks safe was never harder.
Today in the Internet Age, as information becomes more
decentralized, possible communication sources that can lead
to brand erosion expand exponentially. Therefore the need to
proactively protect your trademark is bigger than ever.

32. Trademarks are improtant, whether you own or plan to own
them. It is important to be aware of their misusage because it
might cause a lot of problems. Perhaps next time you will think
twice before you say googling, skyping or tweeting.
Or maybe, you will say it, but in a propper way.

33. In the end, a few tips for future trademark owners:
1. You should never use a verb or a noun as your
trademark name. Same goes with plural and possesive
nouns and pronouns, while they might evoke the
generification of the name.
2. If you own a patent, it is important that beside the
trademark name you also include a generative descriptor
or perhaps invent a new word for the patent.

34. If still not decided how to name your new brand,
we’ll be glad to help.
Or you can just drop us a line - we are allways
interested in meeting new people.
THE & END :)