A trademark is an adjective. It is not a noun or a verb. Why? Because, a trademark’s purpose is to identify the source or origin of a product, NOT to identify the product itself. You have gone to great lengths to find a mark that is not descriptive of your product, and we have discussed that generic marks can never be a trademark, so you do not now want to use your mark in such a way that you cause to become descriptive or generic.
This tends to be more a problem for the company coming out with a first-of-its-kind product. Consumers are already unsure what the product is, and without careful marketing that new moving stairway becomes an “escalator” (originally a trademark of Otis Elevator Company); all coin-operated laundries become “laundromats” (originally a trademark of Westinghouse); and all rolling toys on a string are now “yo-yos” (although still a trademark in Canada).
You see this type of advertising with the Brand Name drug ads. They use the trademark and the generic drug name immediately after. This will help to keep the trademark from becoming a new generic designation, which is what happened to Bayer and its Aspirin trademark in the U.S. While Aspirin is still owned by Bayer in about 80 countries, including Canada, it has been declared a generic term for acetylsalicylic acid in the US.
Newer situations that almost resulted in a successful brand name becoming the generic term for the product itself include “KLEENEX® brand tissues;” “Band-Aid® brand bandages” and “Rollerblade ® brand in-line skates.” Yes, you want your brand to be successful; however, not to the point where it becomes synonymous with the product itself.
So, you want to tell potential customers to use a “KLEENEX® tissue” – not a “Kleenex” – to blow their nose. Your ads should say to buy “Band-Aid® bandages” not “Band-Aids” to keep in the first aid kit. You want to promote the sport of in-line skating and the use of “Rollerblade® skates;” not the sport of “Rollerblading” while wearing “Rollerblades.” Please, encourage people to buy Xerox® copy machines to copy their documents, but not to “Xerox their documents.”
Using your trademark as a noun or a verb equates it with the thing itself and may lead to loss of trademark rights. The marketing department for the XYZ Company may think it is too cumbersome to always include the product name (“SparkleAid dental rinse will make your teeth shine” rather than “use SparkleAid for shining clean teeth”); however, it is essential for long-term viability of the trademark. The last thing you want is for a competitor to be able to use your trademark to identify its product because of marketing shortcuts or errors in the way the mark has been used. The last thing XYZ Company wants to see is this ad from the ABC Company: “Use ABC’s ShineyKleen sparkle aid to keep your teeth looking their best!”
It is possible to rehabilitate a brand name, as was done with Kleenex®; Band-Aid®; Rollerblade®; and some others, but it requires using marketing dollars not to promote the product, but to promote the trademark and often results in even more cumbersome marketing messages “Kleenex® brand tissues” rather than just “Kleenex® tissues.”
Our Insight. Your Advantage. Avoid the problem in the first place – use your trademark as an adjective, not a noun or a verb. Always use it with the common term for the product and not as a stand-alone term. If in doubt, your trademark attorney can quickly review a new ad campaign for proper trademark use. You can also have a complete trademark audit conducted of your website and promotional materials to be sure you are using all of your trademarks properly. Such an audit can also spot unrecognized trademarks or other issues with your advertising materials.
Next, we will discuss the benefits of a periodic trademark and IP audit.