Special Report - Part 1: On Your Mark -- Protect trademarks from being slaughtered by 'genericide'

Protecting a brand trademark from becoming part of the common vernacular isn't an issue just for large corporations like Kleenex and Xerox. In the first installment of a special two-part report, SNEWS® examines how outdoor industry companies also must navigate the turbulent waters of brand trademarks to protect them from becoming generic terms, also known as "genericide." In Part 2, available next week, we offer feedback from trademark experts about strategies that companies can take to protect their marks.
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Protecting a brand trademark from becoming part of the common vernacular isn't an issue just for large corporations like Kleenex and Xerox. In the first installment of a special two-part report, SNEWS® examines how outdoor industry companies also must navigate the turbulent waters of brand trademarks to protect them from becoming generic terms, also known as "genericide." In Part 2, available next week, we offer feedback from trademark experts about strategies that companies can take to protect their marks.

When The Today Show's bright lights shine down on your product, it can be a blessing and a curse. The folks at GU, an energy gel brand, were no doubt thrilled when host Natalie Morales interviewed nutritionist Madely Fernstrom on foods for runners and talk turned to energy gels. The media exposure can spark huge sales. But then, Fernstrom swept her hand over gel packets from several companies and said, "The endurance athlete needs to have these little gu's," implying that GU is a generic term for all energy gels. This is where the blessing can become a curse.

When a brand name is used as a generic term, this contributes to "genericide." With genericide, a product name loses its trademark rights because it's no longer identified with a specific company. Well-known brand names such as Thermos and Scotch Tape lost their exclusive trademark status when they became part of our everyday lingo.

Did You Know?... >> Band-Aid protected its trademark by adding the word "Brand" to its jingle. "I am stuck on Band-Aid Brand, 'cause Band-Aid's stuck on me." >> Cellophane lost its trademark status in 1936. Think that's old? Linoleum lost its trademark in 1878. >> Aspirin was a term trademarked by the German company Bayer in 1899. After World War I, Bayer lost many of its assets and was unable to prevent similar products from entering the market. Bayer’s patent expired in 1917, and in 1921 a court ruled that aspirin had become generic.

Most of us are guilty of contributing to genericide -- exchanging "thermos" for "vacuum-sealed container" or "google" rather than "use a search engine." Each time a brand name is used as a generic term, violators are doing possible harm to its trademark status.

Of course, genericide does not happen easily. A competitor of GU or Google would have to prove in court that those brand names had lost their unique identity. While these companies have not yet faced a challenge to their trademarks, outdoor companies are not immune to generecide, and plenty of brands get thrown around as common terms.

Just think about Gore-Tex. The vast majority of salespeople in outdoor specialty stores have seen customers walk into the shop and say, "Do you have Gore-Tex jackets?" Ten years ago -- but to a lesser extent today -- shoppers thought Gore-Tex was an apparel brand rather than a waterproof/breathable membrane that is used by many brands. And there's a danger in that. If the general public does not understand the true nature of a brand, and is not able to connect a trademark name with a particular company, the trademark is at risk. To its credit, W.L. Gore & Associates has worked diligently and succeeded in protecting its Gore-Tex brand. But others have not been so fortunate.

Consider what happened to Thermos. In a 1947 court case (King Seeley v. Alladin Indus. Inc.), King Seeley actually lost its exclusive right to use the term "Thermos" because it had become a generic term for vacuum-sealed bottles.

A British company, A.G. Gutman, registered the Thermos trademark in 1907, and that year the patent was acquired by the American Thermos Bottle Company in Brooklyn, N.Y. By 1910, the company was touting in its catalogs that Thermos had become a household word. In 1958, Alladin Industries announced that it would begin marketing its own vacuum bottles using the word "thermos." Alladin and King Seeley (which had acquired American Thermos) went to court over the issue, and in 1962 a judge ruled that thermos was indeed a generic term. King Seeley was allowed to retain its Thermos trademark, but it lost exclusive rights to the term. The judge said to avoid confusion in the market Alladin could not use the word unless it was coupled with the Alladin trademark. While Thermos has remained a strong brand, the court decision no doubt hurt its efforts to own the market for vacuum-sealed bottles.

Protecting the mark

As W.L. Gore watched its Gore-Tex brand become synonymous with waterproof/breathable apparel, it established a strategy to further differentiate itself in the market and educate retailers and consumers about how it was different from other technologies. In 1990, W.L. Gore launched its "Guaranteed to Keep You Dry" program in which it certified that products containing Gore-Tex performed properly.

"This was important in our history of making sure we didn't have what's called a 'naked trademark,' which is something that's out there but doesn't stand for anything," said Steve Shuster, global brand manager of W.L. Gore. "A key strategy in building value or equity in a trademark was not just supplying the fabric, but making sure the end item would meet or exceed consumer expectations. I think this is a key part of our strategy that helped distinguish the trademark and the brand Gore-Tex."

GU also devotes much time to teaching consumers about its product, so that they'll understand that GU is a specific brand within the energy gel category. "We're out in the field quite a bit at marathon and triathlon expos, and we talk to people continuously," said Holly Bennett, senior marketing manager. "At a lot of events, you see people who think all gels are GU or that it's a generic product. We set up tastings, and right off the bat, they notice the difference. And we do a lot of explaining about the ingredients and how the brand was created."

Shuster recommended that a company should make sure that everyone who comes into contact with a brand -- from the manufacturer's employees to retailers to consumers -- understands the trademark brand.

Despite best efforts, companies cannot completely prevent the public from using a brand name as a sort of shorthand. Folks simply find it easier to say the word CamelBak rather than an awkward phrase like hydration system, or say Xerox rather than photocopy. No company can completely control this behavior. But the outdoor industry -- specifically retailers -- should be careful to not confuse people further. A member of the SNEWS® team once walked into an outdoor store and saw a round rack of apparel topped with a sign that read "Gore Tex Jackets." Never mind that the rack held jackets made with non-Gore waterproofing technologies. W.L. Gore is of course constantly addressing such challenges.

"In the last three to five years, we have invested heavily in a retail team that spends time at point of sale, not only training and educating, but making sure that signage and supporting POS is consistent with the brand and who we are," said Shuster.

W.L. Gore also educates its employees on proper use of the company's trademark. "We spend a considerable amount of time with our associates ensuring that they understand the value of the Gore-Tex trademark and brand, and that we need to use it correctly. And then we work with our (manufacturer) partners to make sure we distinguish the mark." One strategy is to place Gore-Tex hangtags on apparel and footwear to explain that it is one component of the product.

While companies must educate people and draw distinctions from competitors, a couple of other major issues come into play in determining whether or not a trademark is generic.

  • Uniqueness – The trademark must be unique or fanciful enough that consumers don't confuse it with similar products by other companies. For example, the Kodak brand name is so unusual that even when you use Kodak as a generic term or adjective, as in, "Hey, this is a Kodak moment," you still know that Kodak refers to a specific brand of film from a certain company. But, you'd have a much tougher time retaining a trademark for Joe's Bar, which could refer to a hundred watering holes. A major piece of trademark law, the Lanham Act of 1946, stated "any common descriptive word of any article" cannot be registered as a trademark name.
  • Company diligence – A company must diligently work to prevent its trademark from being hijacked into common usage. Methods include communicating with those who use it generically, such as media, to tell them to stop the practice. Retailers too should be aware of what to do or not -- and be diligent -- when they use trademarked company names.

--Marcus Woolf

>> Be sure to check out Part 2 of our special report where we talk to trademark experts about tactics to protect brand names from genericide -- story will run February 9, 2009.

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