A common mistake entrepreneurs often make when choosing a name for their new business is to pick something that is generic. A generic mark is one that uses words or symbols that communicate what type of product or service is being offered. For example, SUV (sport utility vehicle) is a generic term for a truck-like vehicle that in many cases has a 4 wheel drive and can go off road. Another example is yogurt. Or beer. Or smart phone. Get it?
Generic marks can never become registered trademarks. Allowing a company to use a generic term as their trademark could actually result in giving that company a monopoly in that product’s market. It could also create an enforcement nightmare for the holder of that generic trademark - they would have to spend a huge amount of time and money trying to get other companies from using that generic term in their marketing.
The strongest trademarks are totally unique - ideally made up and not used in any other space. The statute that governs trademark law, the Lanham Act, uses the phrase “unique and fanciful” to describe a mark that is strongest and most worthy of federal trademark registration.
When clients come to me with generic marks, I always have to educate them about this and coach them through coming up with a different, unique mark for their product or service. Those are always hard conversations to have, because when clients get around to hiring my services, they are likely already attached to their brand name, have used it and even might have had some success in selling their product or service under that name. They likely also have social media accounts under that name, and have been working to build a following for those accounts. It is painful (and expensive) to have to rebrand after all that effort. But it must be done because having a generic brand name will create huge headaches for you later (and will ultimately result in you having to rebrand then, when it is even harder).
There is another kind of generic trademark situation that results from when a company actually starts with a very unique brand name and they experience such huge success that their mark risks becoming “genericized.” A trademark can become “genericized” if the mark becomes identified with a type of product or service in the public's mind, instead of being associated specifically with a particular brand. That is a terrible situation for a company to be in, because when that happens, that company can lose all of its trademark rights. It can be financially catastrophic for an established company.
There are many examples of marks that started out strong but became genericized. You know them all without realizing it.
Flip phone
Escalator
Dry Ice
Linoleum
Aspirin
Cellophane
Teleprompter
Trampoline
Videotape
All of these marks were originally trademarked terms associated with a specific brand’s product, but because they created a unique product that became so successful, the public began to associate the brand name with the product, and the names became genericized. It seems unfair that you could lose your mark by being so successful, but there is more to the story.
As an owner of a trademark, you must take certain steps to protect your rights, especially if your product or service goes viral. If you make the following mistakes, you could lose your rights to the mark, and your competitors can all start using it too:
Improper policing of trademarks by trademark proprietors is one major reason behind trademark genericization. You must police the marketplace and go after anyone you believe is infringing on your trademark. Failure to do so can result in a loss of your rights.
Using your trademark as a verb is quick way to dilute for the trademark’s "distinctiveness" (a factor the USPTO looks at in determining whether they will register a trademark). Once you do that, you could easily and quickly slip into the fatal space of trademark genericization.
Examples of marks being used as verbs:
“Let me google that.”
“He tweeted his statement earlier today.”
“That is not what she looks like - it is photoshopped.”
My guess is that you have used all three of those trademarks as verbs. I have.
Continual use of the mark as a noun, rather than as an adjective identifying a particular brand can also lead to degeneration of a trademark. For example, Velcro, a brand name for hook-and-loop fasteners repeatedly urges the public to not use its trademark interchangeably for the type of product as they are at a high risk of losing their rights in the trademark. In 2017, the official YouTube page of the brand Velcro posted a video trying to create awareness about the issue.
Failing to give your product or service an easy to use generic name (in addition to the trademark brand) is another common cause of trademark genericization. E.g. Chrysler invented the term SUV because they couldn’t call the vehicle JEEP without losing their mark. It was a smart and simple way to make sure consumers knew that JEEP is the trademark for one brand in the category of SUVs. It is important to do this even if your product is the first one in that new category - like our Peloton example will highlight below.
Courts have stated that “[a] person who produces a new article and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own, because until somebody else produces the same article there is nothing to distinguish it from.”
Velcro went the extra mile to help educate the public on how and how NOT to use the brand name VELCRO when referring to their products.
Tips to Keeping Your Registered Trademark Alive:
✓Use the generic name of the goods with the trademark, like Band-Aid brand bandages (bandages being the generic term); Kleenex brand tissues (tissues being the generic term); Jeep brand SUV, Ram trucks, Zoom video conferencing, etc….
✓Do no use the brand name as a noun or verb - only use it as an adjective. If the public starts to try to use it as an adjective or verb, like “I photoshopped that photo” or “just google it” or “I need to Xerox this” you have to be proactive to educate the public about not doing that, hopefully in as entertaining a way as Velcro did.
✓Use the brand name on more than one type of product. E.g. Cuisinart food mixers, but also Cuisinart pots, pans, cooking utensils, etc…
How Peloton Plays Into This
The company facing an issue right now with the potential generacization of its trademark is the Mad Dogg Company, which coined the words SPINNING and SPIN Class. This is very timely given the explosion of virtual spin classes (see how I used that as a noun?) via Peloton and other brands this last year.
Mad Dogg’s founders created the original Spinning program and first line of Spinner® bikes in 1991. And they got a trademark in the names SPINNING and SPIN.
And you might think they did exactly what they were supposed to do: they aggressively policed the marketplace for infringers and spent hundreds of thousands of dollars on cease & desist activities and litigation to force competitors to stop using the words.
Then they sued Peloton for violating their patents in their bike designs, and also went after them for trademark infringement. Ruh roh.
Peloton had had enough, and brought a counter suit to petition to cancel their trademarks on the grounds that their trademarks have become generic. In their Petition, Peloton stated: “Spin class and spin bike are part of the fitness lexicon. Even five minutes of simple Google searching reveal that everyone in the world—other than Mad Dogg—understands that “spin” and “spinning” are generic terms to describe a type of exercise bike and associated in-studio class.”
No one can predict how this case will come out, but I believe that Mad Dogg might be vulnerable on the grounds that while they aggressively policed their marks, they failed to protect their exclusive rights to the mark by using the words as nouns. They should have used the phase “Spinning indoor cycling classes” - but instead, they used the phrase “Spinning Class” and “Spin Class.” If I were a betting woman, I would predict that their case will fall on those facts. It will be interesting to see.
In the meantime, my greatest advice to you is to do the following:
1. Use the most unique name you can to brand your product or service before seeking trademark registration;
2. Never use your brand name as a noun or verb - come up with a generic word or phrase to describe what you sell, even if you are the very first one ever selling that item;
3. Educate your customers, employees, salespeople, distributors, retailers and the media about how to properly use your brand name, so you don’t risk the genericization of your mark.