Policing and protecting trademarks from potential pitfalls
Trademark infringement occurs when someone uses another’s trademark (or a similar mark) that creates potential confusion to the consuming public.
If a trademark owner does not confront infringers, the strength of their mark decreases. It is important—critical, even—that business owners ensure nobody else uses their mark.
If a company doesn’t develop a policing plan early, as it grows it can become susceptible to even bigger trademark issues, such as
Dilution is the lessening of a famous trademark’s uniqueness. This is akin to how a trademark weakens when its owner does not police and enforce it.
When a famous mark goes un-policed, it can be susceptible to dilution—where another user (or several other users) use the mark in a manner that cheapens the original trademark’s “aura.”
For example, suppose several shoe companies using the Nike mark and swoosh for their shoes as well. If everyone sells Nike shoes, then the authentic Nike shoes (and their associated trademarks) become less unique and valuable.
Genericide seems like a frightening word – and for some businesses it is.
Genericide means the loss of trademark rights because a certain term enters common usage. A recent example is “Google.” Google (as a company name) became synonymous with their product (search engine). The company faced a lawsuit that claimed their trademark was too common—the term “googling” became a synonymous verb meaning “an internet search.”
Other companies fell victim to potential genericide. The company Kleenex became nearly interchangeable with their product (tissue paper). It became difficult for the company to argue that their name could only associate with tissues produced by Kleenex.
Xerox, in the burgeoning heyday of copy machines, also stared down genericide when offices across America began associating any copy made by a machine with the term “xerox.”
Yet, each company in question managed to avoid genericide with their trademarks. Both Kleenex and Xerox staged successful anti-genericide campaigns by urging customers to stop using their mark as common terms. Google successfully argued that using “google” as a verb did not make their mark generic. It showed that people still used the term “google” to refer to the specific search page (Google.com) that was the hallmark of the company.
They aren’t all happy endings. Google, Kleenex, and Xerox survived potential genericide; trademarks like Asprin and Escalator were not so lucky.
So, what specifically can business owners do to police their mark and avoid genericide?
Take proactive steps to make sure you and your employees do not use your trademark as a verb (like Google);
Do not use your trademark in the plural form.
Prevent individuals working for your company do not use trademarks in common usage. This discourages the public from seeing those marks as common terms—but rather the source identifier you want it to be.
A trademark experiences tarnishment whenever an infringing mark portrays the infringed mark in a negative light—usually in the context of sex, drugs, crime or so on. (It can also happen if the infringer is offering low quality goods.)
Obviously, tarnishment can be a serious problem for any trademark owner. It might decrease the commercial value of the mark and, in turn, products associated with the mark. Most trademark owners don’t want the consuming public to associate their brand in such a negative light.
The most cited case is the matter of “Victor’s Little Secret.” A small adult shop owner used the mark “Victor’s Little Secret” as a play on Victoria’s Secret (the popular undergarment and lingerie brand). The company that owns the Victoria’s Secret mark sued Victor and won an injunction because Victor tarnished Victoria.
Similar to infringement, issues like genericide, dilution and tarnishment require a trademark owner to police their mark. The owner must ensure the consuming public uses the mark only in the way the owner intended.
An easy way to police your mark is to set up “Google Alerts” for your mark. These can send your business an email every time the mark is being used on the internet.
Also, perform periodic Google searches to make sure there are no similar marks in the business owner’s industry.
Some businesses, even small businesses, may hire attorneys to monitor their trademarks and help them enforce their marks. This may include sending “Cease and Desist” letters and/or filing suits against similar users.
Regardless of the potential issue faced, a trademark owner must continuously ensure their trademark is being used for good and not evil.
Meghan Nugent is an associate with SpencePC. She has extensive experience assisting clients in both transactional and litigation matters of all natures. The focus of her practice is Intellectual Property. She also assists the firm’s clients in the prosecution and litigation of trademarks.
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