Protect your Trademarked Brand from Going Public

The laws and federal codes defining and regulating trademarks provide a bit of flexibility concerning brands. And that flexibility, or ambiguity if you wish, leads to litigation and a body of trial precedents that provide intellectual property attorneys plenty of business.

Once you have registered a trademark with USPTO, you are not completely free to do as you wish with that trademark. For one thing, you want to prevent your trademark from falling into the public domain. Think it can’t? Here is a list of well known words that had been trademarks until the courts decided, because someone wanted to use the trademark in a generic way to identify a type of product, that they had truly become generic terms through neglect.

 Asprin             Cellophane
 Corn Flakes    Cube Steak
 Brassiere         Dry Ice
 Escalator         Lanolin
 Light Beer       Mimeograph 
 Nylon             Super Glue
 Thermos         Trampoline
 Yo-Yo           Zipper

So what did these brand owners do wrong?

Essentially they allowed the trademarks to become nouns and/or verbs. Trademarks are, by regulation, adjectives that identify the source of products, they do not describe the product itself (i.e., they do not substitute the trademark for a generic product description).

It is tempting to want to have people think of your product when they think of a product category, but by encouraging people to  make the substitution you are on the road to making your trademark a generic name for the entire product category.

Now Talcott J. Franklin, an intellectual properties attorney, in his book, Protecting the Brand, cites six rules to keep you save from turning your brand into a generic name. In all your written materials…

1 Always use the mark as an adjective.
2 Never make the mark plural or possessive (either makes the word a noun).
3 Never use the mark as a verb
4 Always distinguish the mark from the remaining copy.
5 Always indicate the trademark status at least once when you include the trademark.
6 Do not give the mark a definition, except as a trademark for the company. 

Those are pretty self explanatory except for number six. I believe Franklin’s meaning here does not preclude a phrase such as “Xerox® brand copy paper”. This isn’t a description of the trademark, rather the trademark is an adjective modifying “copy paper”. Rather, using a tagline like “Xerox®: leader in paper imaging” actually makes the trademark a noun. And that’s the issue.

So if you own or are planning to own trademarks, I’d suggest you get Franklin’s book, and I’d also seek the advice of an intellectual properties attorney.

Martin Jelsema

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