How to Protect Your Trademark


A recent trademark client told me he couldn't wait for his brand to be so famous people would use it as a verb, like to google (to search online) or to xerox (to copy documents electronically).

The problem is, a trademark is an adjective that describes the source or maker of a good or service. Using a trademark as a noun or a verb can turn your valuable brand name and asset into a generic word that your competitors can adopt to describe a category of product or service.

Xerox is frantically trying to keep its exclusive trademark rights for XEROX brand imaging products.

Johnson & Johnson is equally as frantic in trying to get people to say "BAND-AID brand adhesive bandages.

Some trademarks that have become generic include: aspirin, escalator, styrofoam, kerosene, dry ice, thermos, lanolin, linoleum and laundromat.

Trademarks are likely to commit "genericide" when they are associated with a new product category.

To prevent genericide, take a lesson from Sanka brand decaffeinated instant coffee. Coffee without caffeine was a new invention in 1903, so the owner introduced two new words to the buying public: SANKA (a brand name) and decaffeinated coffee (the product category). SANKA was protected as a trademark (now owned by Kraft Foods) and decaffeinated was created to become generic as coffee without caffeine.

Other ways to protect your trademarks are:

Always set the trademark apart from other words appearing nearby (through different lettering styles, quotation marks, capital letters or other appropriate means).

  • TEXAS PETE hot sauce

  • Tabasco brand pepper sauce

  • "Pace" chunky style picante sauce

  • Old El Paso salsa

Use a trademark symbol after the name of the product. The "® " symbol indicates that the mark is subject to a federal registration, while the "™" symbol indicates a state trademark registration, a common law trademark or a trademark that has not yet received federal registration. It is important not to use the "®" symbol until the federal registration certificate is issued. If your mark is subject to a state registration only, you are not allowed to use the "®" symbol.

  • Coca Cola® soft drinks

  • Introducing Tranquility™ brand mountain spring water

A trademark is always an adjective, never a noun or verb.

  • Correct: Make a copy on the XEROX copier; Let’s play with a FRISBEE brand flying disk; I’m going to use SIMONIZ paste wax on my car

  • Incorrect: Make a XEROX of these for me, Let’s play with the FRISBEE; XEROX these documents for me, I’m going to SIMONIZ my car

A trademark is never used in the plural form or the possessive form.

  • Incorrect: Let’s play with some LEGOs; I think KLEENEX’S quality is the best.

A generic identifier always follows the trademark. This is absolutely essential.

  • Correct: KODAK cameras, JEEP sport utility vehicles, LEVI’S jeans

Make sure other people are using your trademark correctly. Several companies offer "watch" services that monitor thousands of databases for uses of your mark, and notify you when a third party attempts to register a similar trademark.

By the way, Google did try to stop generic use of "to google" meaning "to search." Since google is now a noun in the Merriam Webster dictionary, I think the generic ship has sailed.

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