“Hand me that Kleenex, I am saying good-bye to my mark” Or Improper Use of Trademarks

Trademarks or services marks are used to identify the source of goods and services and enable customers to distinguish them from the goods and services sold or offered by others.  Proper use of the selected mark is crucial to building such an important and valuable asset as a brand name. A mark, being a symbol of integrity and quality assurance, allows its owner to develop public goodwill and brand reputation in the goods or services that are sold.  Even a strong mark can lose its distinctiveness and become generic if it is not used properly. Once a trademark is “genericized,” it can no longer function as a trademark and, as a result, the owner of the mark loses all enforceable trademark rights and protections.

So, what is “genericization” and how to avoid it?

Genericization of a trademark can occur when a trademark owner misuses its own mark in advertising and promotion thus leading to the general public’s misuse of the mark.  As a result, the brand name of a product becomes associated with the actual product itself rather than with its source. Genericization may also occur when a trademark owner fails to maintain active use of the mark or to enforce owner’s rights in the mark, such as through an infringement action.  While trademarks are legally declared “generic” only upon a hearing and court ruling, it is a trademark owner’s duty to police the manner in which its trademarks are used and actively campaign to cease any misuse of the mark.

The International Trademark Association (INTA) has developed an “ACID” test for trademark owners and consumers to ensure accurate use of a trademark:

Adjectives.  Trademarks and service marks are adjectives or, more precisely, “attributive modifiers”; they are not nouns or verbs.    A mark should always be used as an adjective qualifying a generic noun that defines the product or service. A mark is a company brand name, not a product or service itself.  Whenever possible, a trademark should be followed by the common name, a noun, of the product it modifies (“KLEENEX tissue,” “COCA-COLA soda,” “APPLE computer”).  The word “brand” may also be used following the mark (“KATE SPADE brand purse” or “7 FOR ALL MANKIND brand jeans”).  It is not appropriate to use a trademark as a common descriptive adjective or as a verb (incorrect: “Googling information,” “Hoovering the floors”) or to modify the mark to the plural form (incorrect: “TIC TACs” or “OREOs”).  Similarly, because a trademark is not the name of a product, it cannot be used in a possessive form (incorrect: “OREO’s taste is the best”).  Only the generic product, which the trademark modifies, can possess anything (“OREO cookies’ taste is the best”).

Consistency.  The mark should be represented the same way each time it is used.   It is important that any and all references to a particular mark are accurate and consistent.  For instance, if a mark is highlighted or represented in all capital letters, one should consistently highlight the mark or use all capital letters when referencing that mark.  


Tip: When you leave the trademarked terms out of your sentence, the integrity of the sentence should stay intact, and the sentence should still make sense without any change in the grammatical structure of what is said.

Example: “Celebrate fall football season with a custom bottle of the Coca-Cola® soft drink featuring the logo or mascot of your favorite NCAA® team.”  If you leave the marks out (COCA-COLA and NCAA), the sentence will still make full sense.  Bingo!


Identification or Status.  The ® symbol should only be used to identify a registered trademark or service mark.  As a general practice, the TM symbol is recognized as identifying an unregistered trademark, and the SM symbol is used to identify an unregistered service mark. Although these symbols have no legal significance, their use does have the preventative effect of indicating possible claims to trademark rights in the designations with which they are used.  Other proper forms of notice for registered trademarks in the U.S. include: “Registered in the U.S. Patent and Trademark Office” and “Reg. U.S. Pat. & Tm. Off.” These notices may be used alternatively or as a supplement to the ® or common law TM or SM notices and may be presented in a form of a footnote or a text notice (“APPLE is a registered trademark of Apple Inc. Registered in U.S. Patent and Trademark Office” or “APPLE is a trademark of Apple Inc. Reg. U.S. Pat. & Tm. Off.”)

Distinctiveness.   Trademarks and service marks should be displayed in a different font or manner to distinguish them from the surrounding text.  The most common examples of how to make the mark distinctive in the context are capitalization of the mark (the entire mark should be capitalized, e.g. PAPA JOHN’S), using initial caps with quotes (“Pizza Hut”), using italics, bold-faced or a different font, or a different color to create distinction. The generic product name that follows the mark should not stand out from the remainder of the text.

 

So, to avoid the fate of aspirin, cellophane, bikini, granola, zipper, escalator, and many others,

“Don’t hand me that KLEENEX® brand tissue; I am keeping my mark.”