How Trademarks Become Generic, and Six Best Practices for Trademark Use

Once you’ve registered your trademark, it is protected and you can be free to use it for your own business purposes, right? While registering your trademark is the first step toward keeping it safe, there are many other things to keep in mind when using your trademark. For instance, the very way you use your trademark in your business operations could either reinforce its status, or undermine it.

Precision in language and imagery is key here, as a trademark that is used out of its original context can quickly become “diluted”.

How Can a Trademark Become Diluted?

You may have heard of the term trademark becoming generic: this is when a trademark becomes so popular that people begin to use the term to refer to a larger category of products (usually against the intentions of the trademark holder). Once that happens, the trademark is basically unenforceable.

That’s what happened to Elisha Otis. He conceived of a mechanism for moving heavy freight effortlessly between the different floors of a building. He called his invention the elevator. Because he failed to protect the name, elevator is now the name by which Mr. Otis’s world-changing invention is known and is available to be used by all wishing to offer competing products.

The Distinctive vs. Generic Spectrum

A trademark always lives somewhere on the spectrum between distinctive and generic. Your job as the trademark holder is to keep it as distinctive as possible.

• “Fanciful” or “coined” — are original words with no meaning as to the nature of the product
• “Arbitrary” — are existing words with little if any reference to the nature of the product or service
• “Suggestive” — having primarily trademark significance but with suggestion as to the nature of the product
• “Descriptive” — not just suggesting, but actually describing the product or service yet still understood as indicating source
• “Merely descriptive” — having almost entirely reference to the product or service but capable of becoming “distinctive”.

Some notable examples of trademark that became generic include Aspirin, Cellophane, Escalator, Thermos, Dry Ice, and App Store. All of these things were originally made by a single company, but have since expanded in meaning to refer to any product of this type.

Best Practices for Using Your Trademark

With all this in mind, here are some things to keep in mind when using your trademark:

1. A trademark should always be used as a proper adjective. Most importantly, it should not be used as a noun. For example: instead of referring to a certain food product as “OREOS” it should be referred to as “OREO” cookies. This is key for preventing the trademark from beginning to refer to an entire class of objects. By being an adjective, and being followed by the type of product (“cookies”), the trademark stays as “distinctive” as possible.

2. In particular, trademarks should never be used as a verb. For example: You may say “Clean the windows with WINDEX glass cleaner” but you should not say “Windex my windows”. Using something as a verb has a tendency to very quickly make that trademark into a generic term.

3. In print, your trademark should always be used in a manner that will distinguish it from the surrounding text, i.e., by capitalization, bold-faced print, different colors, underlining, quotes, larger letters, etc. Add the trademark symbol to show that it’s registered. The key is to make it stand out and thereby fight the notion of it being a generic class of product.

4. Use your trademark exactly as registered. If your trademark is a word mark, always spell your trademark exactly as it appears in your trademark registration certificate, and never abbreviate it in any way. If it’s a logo or design, always use the precise pictorial representation as shown in your trademark registration certificate.

5. Trademarks should only be used in the non-possessive form, unless the trademark itself is possessive, such as McDONALD’S.

6. Trademarks should only be used in the singular form.

Putting Your Trademarks in Good Hands

As you can see, there is much more to safeguarding a trademark than just the initial registration. There is a lot of nuance here, and these trademark best practices need to be adopted and internalized by everyone at your company who works on design, advertising, PR — basically anything that your company puts out “into the world”.

Whether you need some start-up documentation and training materials on how to use your trademarks, or ongoing review and approval of advertising materials for trademark use best practices, we are here to help. We also offer trademark monitoring services that will alert you and enable you to take action if your trademark is being infringed or even if you notice that it is in danger of becoming generic, worldwide.

At IpHorgan, we offer you insight that can only be acquired and developed during our 15 year history working on intellectual property transactions with businesses in nearly every sector of the U.S. and global economy.

Our lawyers are authorized to practice before the U.S. Patent and Trademark Office, the U.S. District Court for the Northern District of Illinois, the U.S. Court of Appeals for the Seventh Circuit, the U.S. Court of Appeals for the Federal Circuit, and the Supreme Court of the United States.

Contact us today to discuss your needs and safeguard your company’s intellectual property for the long term!