HOW TO PROTECT YOUR BRAND FROM LOSING DISTINCTIVENESS?

In continuation to my previous article “How Can We Lose Distinctiveness Due to Improper Use of Trademark?”, the next important step is to protect the distinctiveness of a Trademark.

In today’s world, where consumers purchase products based on the brand name and trade symbol which accompany the product, protection of the distinctiveness of a trademark is of the utmost importance. With the strong influence created by Trademarks on the consumers, more consumers start using the mark in day-to-day life, and then they slowly start using the mark generically. Such generic usage slowly starts diluting the distinctiveness of the Trademark. Once the Trademark loses distinctiveness, the Trademark owner may not be able to emphasize his rights on the Trademark, and with it, all leverage on the Trademark is on a toss.

Other reasons for loss of distinctiveness include:

• improper use and management by its owner,
• intentional dilution by competitors, and
• The long-term monopoly of products.

A trademark becoming a generic name can result in the loss of the trademark’s functions and use, hence the cancellation of the mark, so trademark owners should obviously try to prevent this.

The best example of trademark genericide is Aspirin

Bayer had to give up its trademark in the United States, the United Kingdom, and France as part of Germany's war reparations in 1919. Bayer was also forced to sell a quarter of its aspirin supply to the victorious nations at a discounted price. Here is an interesting case study on “How Bayer lost their trademark Aspirin”

When a registered trademark owner fails to police and enforce the unauthorized use of their trademark, the trademark owner risks losing the mark through a form of?abandonment?known as genericide.

A trademark suffers genericide when the trademark or tradename becomes so commonly used by the general public that the trademark becomes synonymous with the product, and if the entity that owns the trademark does not fight to keep the trademark protected, the trademark or tradename can become a generic term, i.e., it can lose its legally protectable distinctness.

Example

Genericide has happened to many unfortunate trademarks in the past. Some examples of generic terms that are used commonly today, that were once trademarks include:

Now, the question that comes to mind is “How Companies can avoid?genericide?”

There are many strategies that a trademark owner can do to?protect trademark rights to be a victim of genericide. Some ways to help and avoid a trademark from being generic include:

? Monitoring the use of the trademark.

? Enforcing trademark rights.

? Educating companies and the public about the proper use of the trademark.

? Always present the trademark in the proper form, i.e., always in the proper font/stylization, or all capital letters, and with the appropriate trademark symbol (e.g., ? or ?).

? Never use the trademark in a generic manner.

? Make clear to consumers that the trademark represents the brand and not the product itself.

Judicial Review

A federal court recently examined the question of whether Google has become generic?. The case began when an individual acquired several domain names with the term “Google.” Google filed an objection, and the domain name holder countered by claiming that Google has become a generic term and used to describe the act of internet searching. An Arizona federal court rejected this stance. The court found that the defendant did not present sufficient evidence that?Google?was primarily a generic term. The court held that it is not enough to show that sometimes the public uses a trademark as the name, rather than the brand. For now, Google’s brand remains protected, but it will likely want to step up its efforts to protect the brand from becoming generic.

Google has taken such steps to protect its trademark. For example

1.????They discourage publications from using the term ‘googling’ in reference to web searches and send cease and desist letters to those infringing on their trademark.

2.???Google’s?Rules for Proper Usage?of its trademarks include, among many others, the following requirements:

• Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form.
• Use a generic term following the trademark, for example, GOOGLE search engine, Google search, GOOGLE web search.
• Don’t use Google trademarks in a way that suggests a common, descriptive, or generic meaning.

3.???Google announced on 10 August 2015 that it was creating an?umbrella organization?called?Alphabet Inc.,?encompassing Google itself and its many satellite companies. It appears the unexpected move is Google’s effort to protect its valuable brand and keep its name from becoming a generic term for searching the internet.

4.?Google’s strategy and focus on how its name is used even extends to Sweden, where the country’s Language Council wanted to add the word “ungoogleable” to a list of new words as meaning something that can’t be found on the Web using a search engine. Note a search engine — not necessarily Google’s. Google objected and asked for changes showing the expression specifically refers to Google searches and a disclaimer saying Google is a registered trademark.

Google is trying hard to tame the demon of genericization by actively considering the issues and educating the customers about the usage of the term.

Endnotes:

Registered trademarks can often be the?most valuable assets of your business?and, unless you?enforce your trademark rights?consistently and regularly, you may lose those assets. Through internal education and external enforcement, a company can ensure that they are able to protect the company’s identity and ensure that they do not become generic.

?P.S.: This article is co-authored by my colleague?Aditi Amar Sharma?and?Nalini Chandrakar