I encourage clients all of the time to trademark their business name, slogan or logo. Last week, I came across a story that made think about my clients and their marks. Besides the examples included in the story, I am sure that we can all think of other (Think Aspirin. Kleenex. Thermos.) These company or product names either at one time were or are trademarked. The names all have one thing in common; they have become “generic.” In order words, the term or name now lacks distinctiveness and can no longer function as a trademark.
When does a trademark become generic?
If the public considers the trademark to be the name of the product itself rather than an exclusive source of the product, then a trademark can become generic. Competitors may then have the right to use the term to name a similar, competing product.
Under current U.S. case law, a trademark or service mark that becomes generic is no longer entitled to protection. Further a generic mark is subject to cancellation at any time by the United States Patent and Trademark Office (“USPTO”). This is true even if the mark is considered to be incontestable.
So how to you prevent this?
- Do not use the mark to refer to the product in advertising.
- Do not use your mark as a verb.
- Use capital letters or quotations around the mark.
- Use the mark followed by a generic term.
- Use the trademark symbol following the mark.
This is not meant to be an inclusive list as there are a number of other measures that a trademark owner can take to prevent a mark from becoming generic. With any trademark, owners must continually monitor how their trademark is being used by third parties as well as the company itself.
If you have questions regarding trademarks or other intellectual property issues, please contact our office at (812) 463-2056 or through our website.
