Keep Your Mark Unique

What do the words “aspirin”, “escalator”, “zipper”, and “margarine” have in common? Read on to find out!

Article 15 Section 1127 of the United States Code defines the purpose of a trademark as “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Once a trademark ceases to carry out this function of separating a product from its competitors, the mark is no longer eligible for protection. Each of the examples above has, to some extent, lost its trademark protection due to the mark becoming a generic term, or as defined in the glossary of the United States Patent and Trademark Office, “terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.”

Business owners should carefully select and protect their marks. The United States Patent and Trademark Office (USPTO) is only responsible for the registration of trademarks, not the protection of them. It is imperative to select a mark that is strong from the outset. The stronger your mark, the easier it will be to protect. In terms of registration with the USPTO, the strength of a mark falls along a continuum with fanciful or arbitrary marks being the strongest and easiest to register and generic marks being the weakest and impossible to register and enforce. Fanciful words are invented words with no meaning, while arbitrary words are real words with meaning, but the word has no relationship to the goods it describes. At the other end of the spectrum, generic or common words are regularly used to describe goods and services, and as such, are not eligible for protection.

⇒⇒⇒Strength of the Trademark⇒⇒⇒

Generic

Descriptive

Suggestive

Arbitrary

Fanciful

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After you have chosen a strong mark, protecting your mark is equally important. Even fanciful or arbitrary marks can become generic over time, and ironically, it is often the trademark owner who is at fault. There is even a term, “genericide”, for this unintended action by a trademark owner, which the International Trademark Association describes as “the process where the trademark owner actually participates, often unknowingly, in the destruction of the distinctiveness of the trademark.” Even though a trademark is considered “incontestable” after five years of consecutive use from the date of federal registration, 15 U.S.C.§ 1064 notes several criteria that can leave a trademark eligible for cancellation: one of these is that the mark has become generic.

Along with choosing a mark that is eligible for considerable protection, the trademark owner must be vigilant to ensure others are not using their mark in a generic fashion. Listed below are a few preventative strategies a trademark owner can use to avoid the weakening of his mark in this manner:

1. Always make sure your trademark is being used as an adjective in your own marketing as well as by those in the public. When a trademark is used as a verb or a noun, separate from the generic product it describes, repeatedly over a period of time, the mark will be in danger of becoming generic.

2. Make sure that all marketing materials clearly distinguish the trademarked word from the remaining text on websites, product labels, and other forms of advertisement.

3. Use your trademark symbols: “™” for trademarks that have not completed the registration process or “®” for registered trademarks. You have invested considerable time, effort, and financial resources into both registering and maintaining your marks. Use of the symbols reminds the public that it is a registered trademark and not just another synonym for the goods or services.

While it might seem flattering that your mark comes to be so popular that it becomes synonymous with the product it represents, the trademark owner must be wary of the mark losing its distinctiveness and ultimately losing registration rights. Relevant consumers must be able to recognize the mark as distinguishing the goods or services of one party from those of others. Once consumers start to use your mark interchangeably with the product, it just might be too late.

#Trademarks