A trademark is a word, symbol or phrase that is used to identify the source of a particular product. Because a trademark works to uniquely set apart the source of a product from other brands and service providers in the marketplace, the United States Patent and Trademark Office requires that a trademark be unique and distinctive in order to receive protection.
However, there are cases where a mark at one point qualifies as unique and distinctive when approved, but it eventually becomes generic over time. If this occurs, the trademark owner can actually lose their trademark protection.
Take, for example, the word “Aspirin.” Aspirin was the brand name of a pain reliever, acetylsalicylic acid, developed by the pharmaceutical company Bayer. At the time, Bayer was granted a trademark for the word “Aspirin,” as Bayer was the only source of the product and there was no other way to describe the item being sold. Over time, the word “Aspirin” became a general term that the public used to describe all pain relievers. As such, the word “Aspirin” lost its trademark protection in 1919 because the word became too generic. That meant other companies were now free to market using the word “Aspirin” without infringing on anyone’s trademark.
Other examples of words that once had trademark protection but lost them over time as they became common in American vocabulary and life include, “Escalator,” “Zipper,” “Yo-Yo,” “Laundromat,” and “Trampoline.”
Interestingly, the company Google has been fighting a similar battle, as the word “Google” is now commonly used as a verb amongst internet users to refer to any kind of search of the web. So far, Google has been successful in defending its trademark in court, but it’s a word that is certainly at risk of becoming too generic as time goes on.
The good news is that the process of a word or phrase becoming generic is not something that happens overnight. And, there are many ways to beef up your trademarks to ensure that they do not lose protection if the name of your product becomes common in language or culture. That’s why when developing your trademark, it’s best to work with an experienced Intellectual Property attorney who will offer suggestions on how to make your mark more distinctive so that it stands the test of time.
Some general information to help you better understand the proper use of a trademark:
- Trademarks are adjectives used to modify nouns; the noun is the generic name of a product or service (software, platform, etc.). Using a mark as an adjective is important because you do notwant your mark to become the generic name for the product, like aspirin, escalator, thermos, and countless others. An appropriate, generic term must appear after the trademark the first time it appears in a printed piece, and as often as is reasonable after that. (ex. Xerox copy machine, Kleenex tissues, Vaseline petroleum jelly).
- Trademarks should not be used in the plural or possessive form.
- Consider using distinctive font. A trademark should be used in a manner which will distinguish it from the surrounding text, the purpose of the trademark is to create a brand awareness for your customers.
- Use consistently. The trademark should be represented the same way each time, all caps, italics, specific font, etc.
If you are currently working through this process and you’d like feedback and guidance about how to improve the strength and distinctiveness of the trademark you are considering, we invite you to contact our Intellectual Property attorneys to schedule a consultation. We’d be happy to meet with you at our New York or South Carolina offices, or via video chat or phone conference. To schedule a consultation, contact us at 888-666-0062.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.