Fatal success

In Insights, Uncategorized

14 February, 2014

When introducing a product, the company must have as a goal or at least a hope that the trademark related to the product will become known. Some may even pray for well known or famous. They may get exactly what they hope for and some of those may find themselves cursing the day, when it happens. 

A trademark may lose its ability to identify the source for the product and instead become the product itself. Like aspirin, which used to be a worldwide trademark but now has lost its trademark status, in some countries. Aspirin is now a generic term for the product “pain killer”. The risk is especially big, when you also invent the product, e.g. Vaseline.

When a trademark loses this ability, a generic trademark is the result (also known as a genericised trademark or proprietary eponym). Obviously, the owner of the trademark fears this evolution as it also means that everybody can use the used-to-be-trademark-but-now-demoted-to-dictionary-word.

Famous trademarks, of which some of them have been declared genericised in some countries: Thermos, Yo-yo, Linoleum, Jeep, Xerox, Stetson, Plexiglas, Kleenex, Velcro, Post-it, Flamingo, Jacuzzi, Mærkat, Frisbee, Cellofan, Gore-Tex, Adrenalin, Bobcat, Dictaphone, to google something, Hacky Sack, Teflon, Vaseline, Rollerblades.

Escalator was a trademark for Otis Elevator Company, more or less until Otis used the following words in a commercial “the latest in elevator and escalator design” thereby telling about their Escalator product by using the trademark as a describing word; the ultimate sin when you are dealing with a famous mark. From then on, rescue of the trademark was not really possible.

How to minimize the risk: Only use the trademark in its registered form, e.g. never photoshop anything, never sell two Jet Skis, never use a possessive term such as the Frisbee’s color. Also consider correcting campaigns to educate customers, businesses and dictionaries combined with effectively enforcing your trademark rights. Add a describing word whenever you use your trademark such as walkman® music player, just like Nintendo started heavy co-use of ”game console” – you may have to invent a new word in the process. Thereby you help people respect your trademark, and you can document later – if needed – that you have done everything possible to become known, but not too known!

Claus Marcussen, Attorney at Law

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