Trademark Genericism: Minimizing Risks to Brands, Protecting Brand Value, Best Practices, and Lessons From Recent Federal and Agency Decisions

Description

Aspirin, escalator, and trampoline are a few examples of once-valuable trademarks that became, over time, generic terms and part of the public domain, free for anyone to use, including direct competitors. In recent years, Google successfully defended against claims to cancel the GOOGLE mark alleging it had become a generic term. Brand owners and their counsel must understand the realistic risks associated with trademark genericide.

Brand owners and their counsel need to understand when and how it is appropriate to take protective action. For example, a few years ago, Velcro Corporation created a now-famous video that instructed people to stop referring to all hook and loop fasteners as "Velcro." The video informed the public that using the Velcro name violates trademark laws, and misuse can cause the company to "lose the circled R" and kill its trademark.

Similarly, Xerox Corporation has taken out ads to educate the public about proper trademark use, asking the public only to use "Xerox" to identify its products and not to use the term as a verb in place of "copy" or as a noun referring to "copies." Steps to minimize the risks of genericide are essential to safeguarding the value of the mark.

Listen as our authoritative panel of IP attorneys examines genericism and the threat it poses to brands. The panel will discuss the risks of genericide to brand owners and where and how they arise. The panel will also discuss the steps companies and their counsel should take to minimize these risks. The panel will review recent federal court cases and TTAB proceedings addressing genericism and the lessons learned from those decisions.