What is this all about?

“What is all about killing a trademark?  How can you kill a trademark?  It is an intangible property, right?” I know some of these questions may pop up in your mind while you read this. Killing a trademark is very much possible and by doing so, you may not make it disappear completely from the world, but you will destroy its essential qualities. We are going to discuss here some issues revolving around:   how a trademark can lose its essential qualities; what happens after that; and how to prevent that from happening.

A trademark, as we know, is primarily a negative right given to the registered owner by law.  However, the absolute (not always) right comes with its own terms and conditions. We have already discussed in one of our older posts about losing a trademark over non-use after obtaining registration. Excessive or wrong usage can also render the trademark a generic mark.

Scale of distinctiveness

Distinctiveness is the most essential quality of a trademark.  Simply put, the more distinct a trademark is, the better control you have over it.

Do you know that these words were once trademarks?

Escalator – was once a trademark before it became generic and now it means, “A stairway whose steps move continuously on a circulating belt.”  Escalator is now being used to denote moving staircase.

Thermos – now being used to denote vacuum-insulated bottles.

Aspirin – held generic for acetylsalicylic acid pain reliever

Xerox – was once a trademark and now denotes photocopy.

When a trademark becomes generic?

How to prevent your trademark from becoming generic?

• Advertising and Correspondences – Do not use trademark as the name of the product itself in your own advertising or internal correspondence.
• Plurality – use the generic term for the product to show plurality, e.g., correct:  Two Coca-Cola bottles; Wrong:  Two Coca-Colas
• Using Trademark as a Verb – do not use your trademark as a verb, e.g., Correct:  Chatting in Facebook, Wrong:  Facebooking
• Identify and differentiate the trademark – Identify the trademark as a trademark by using capital letters or quotes to depict the trademark, e.g., GILLETTE or “Gillette”
• Identify the trademark as a trademark by using a generic term following the trademark, e.g., HEINKIN beer
• Identify the trademark as a trademark by using the appropriate trademark symbols, e.g., Budweiser® beer
• Use statements such as “XYX is the registered trademark of ABC Company”
• Be vigilant and do constant monitoring  – if your competitor or advertising company or media wrongly uses a mark, do notify them by sending a communication insisting the correct usage.
• Tell public how to use your trademark – provide guidelines as to how to use your trademark properly.
• Tell your business partners, associates, vendors and Franchises – provide guidelines as to how to use your trademark properly

Can you recapture your mark?

Although recapturing is possible, it can be possible only in those very rare circumstances in which the public no longer understands the term to be the name of the product itself.  So, the onus of proving the same lies on your shoulders. You should consult your trademark counsel for appropriate measures.

Consult your trademark counsel

If a competitor misuses your trademark as a generic term or using your trademark in unfair advertisements, consult your trademark counsel about whether and how to object to the misuse and what legal remedies are available to you.  Get usage guidelines and restrictions drafted and make those guidelines part of your business agreement.

Thank you for reading this post!  We wish you all the best.