The purpose of registering your brand as a trademark is to provide you with the right to bring an action against an unauthorized party who uses the same or similar brand on the same or similar products or services as covered by your trademark registration.
Thus, if you have a registered trademark for APEX in respect of prepared food products, cereals, biscuits, bread and confectionery, and an unauthorized party uses CAPEX on cakes, they will in all likelihood be held to be infringing your trademark registration.
But, what happens when you have developed a novel product and attach a new brand name to it? As an example let’s use the Sony Walkman analogy.
The Sony saga
Sony Kabushiki Kaisha, of Japan, developed the first portable audio cassette player. Sony came up with the brand name Walkman, and applied to register it worldwide. It eventually registered the name Walkman for electronic products, and started marketing its new product as a Sony Walkman.
Unfortunately, Sony did not initially adopt a descriptive name for the product at the same time as it developed the new brand name.
The company further compounded the problem by marketing its new product under the well-known Sony brand, with Walkman effectively being relegated to the descriptive term for the new product.
At this stage, the use of Walkman as the stand by description of the product was not a problem. Sony was first to market with such a product, and there were no competitors.
All was fine until Sony’s competitors saw this new revolutionary concept and decided to manufacture and market their own portable audio cassette players. As Sony had no patent on the new product, and probably could not have obtained one anyway, it could do nothing where the mere concept was taken and turned into competitors’ branded products.
The problem: What could the trade and public call them? The obvious answer was Walkman. So, instead of it being a proper noun (trademark) it became a common noun for the product.
Soon, everybody was referring to all different manufacturers’ products as Walkman, and Sony started to steadily lose sales. What could it do to retrieve the trademark?
Firstly, Sony had to come up with a descriptor to take the place of Walkman. Sony chose “personal cassette players.”
Then, it started advertising their product as “Sony Walkman personal cassette player.”
Secondly, the company had to educate the trade and public that Walkman was a registered trademark and could not be used as a descriptive term for the product. The proper description was “personal cassette player.”
Sony published warning notices in newspapers advising the public and trade that Walkman was a registered trademark and that continued misuse of it, as a descriptor would constitute an infringement of its registered trademark.
Slowly, competitors adopted the term “personal cassette player” to describe the product in both their advertising and in-store promotions.
Finally, after a number of years, Walkman became re-established as a registered trademark.
The purpose of this analogy is to point out the good and bad aspects of your brand becoming generic.
The competition factor
Initially, while there is no competition in the marketplace, it hardly matters that your brand becomes the accepted description for the new product. Nobody else is competing at this stage, and all is rosy. Those are the good times. However, if your competitors manufacture the same product and brand it with their own registered trademark, they will be able to use the description, e.g., “Sanyo-walkman.” Competitors can use it in their advertising and in-store promotions, and the public will use the term walkman.
This is when it starts becoming bad.
The English language is littered with previously well-known brands having become generic. It’s the way that language evolves.
In the Collins Concise English Dictionary (2nd Edition), the following listings are noted:
escalator – a moving staircase consisting of stair treads fixed to a conveyor belt (originally a trademark) gramphone – a device for reproducing the sounds stored on a record (originally a trademark) transistor – a semiconductor device with controlled current flow; a transistor radio (originally a trademark)
On the other hand, terms such as Thermos, Lilo, Cheddar, Champagne, Dolby, Plasticine, Sellotape and Formica are listed as proprietary names (trademarks), despite having often been misused and confused as generic descriptions.
Don’t be common
So how do you avoid your valuable trademark becoming the generic description for the actual product?
- When a new and revolutionary product is first developed, and even before a new brand name is created, it is first necessary to decide on a description of the product which will be used as the generic name; i.e., one which all competitors will eventually use, but not the one which will eventually be exclusive to your organization.
As an example, Rollerblade Inc. should have called their new product an “in-line skate” from the start, and then applied the Rollerblade brand to it. Then the correct manner of presenting it would have been: Rollerblade in-line skates.
The Kimberly-Clark Corporation refers to its product as “Kleenexbranded facial tissues”. This leaves no doubt that Kleenex is the brand or trademark.
- Always use the brand name in a way that visually distinguishes it from the description; e.g, in block capitals, or in a distinctive logo format, with the symbol (once registered as a trademark), followed by the description in lower case, and preferably on another line. Use of tm is acceptable, but does not indicate a registered trademark. It merely serves the purpose of showing that somebody is claiming proprietary rights in that name.
- It follows that you should ensure your brand name is registered as a trademark. This is a relatively straight forward exercise. However, it is best to contact somebody who has expertise in the area of trademark protection to ensure that full protection is obtained not only for the current situation, but also to take into account any future strategies.
- Make certain your marketing and sales staff never use the brand name generically, e.g., they must say: “We have 20 Walkman-branded personal cassette players currently in stock.” Proper usage internally is the most important place to start so as to avoid your brand name becoming generic.
- Actively police any misuse of your brand name being used generically. Initially, a relatively polite but firm letter should be sent out, pointing out that the brand name is a registered trademark, and that a lot of time, effort and money have been put into developing it, etc. This is more educative than threatening. Then, if the misuse persists, your trademark lawyers should be called in to send the next letter.
Generally, however, the initial approach has the desired result of getting the offending party to stop.
In following all the above steps, you will ensure the longevity of your brand name. You will also avoid the need to take action against unauthorized use of your registered trademark as a generic term. It is a very costly exercise litigating for something which is essentially yours, and which, with a little more care and attention, would not have slipped into the public domain as a generic term.
Therefore, while initially, it is good for your brand name to be known as a generic for the particular new product you are marketing, it will, in the long term, be bad for business once your competitors make the same product and use your brand name as a descriptor.
For more information about selecting, clearing and protecting brand names, and about the International Trademark Association, visit the Association’s Web site at www.inta.org. For a comprehensive list of over 3000 U.S. registered trademarks, go to www.inta.org/tmcklst1.htm.
This article appeared in the November 2000 issue of Writer’s Digest.
John Hackett is a partner with intellectual property lawyers and patent attorneys, A.J. Park & Son, and a member of INTA’s Public Relations Committee. This column was provided by INTA.