How Are Trademarked Terms Affected by Common Usage?

A trend has become ubiquitous in recent years that makes grammar nerds everywhere cringe and recoil in disgust. And no, we’re not talking about using an apostrophe and an s to denote plural. It’s the common usage of nouns as verbs. For example, instead of saying “send me a direct message” or “shoot a message to my inbox,” people are increasingly opting for “DM me” or “inbox me.” 

While this practice may seem harmless, it can pose certain challenges when it incorporates trademarked content. Think about when you say you’re going to Uber to the airport, FaceTime with your parents, or Google restaurant options. You may not think much about it, but the owners of such intellectual property probably do. 

What are Trademarks? 

A trademark refers to any word, phrase, design, or symbol that acts as a brand to identify the source of origin of a product or service. That said, having trademark protection doesn’t provide absolute rights over the trademarked intellectual property. It only means that they cannot be used in connection with similar goods or services. This means that third parties can still use it in connection to unrelated services. 

There are different symbols to let the public know you’ve received trademark protection. ™ refers to trademarked goods. “SM” refers to trademarked services. An “R” inside a circle (®) means you’ve registered your trademark with the United States Patents & Trademarks Office (USPTO). 

Once a word, phrase, design, or symbol has been trademarked, you must file for a renewal every ten years.

What Are the Requirements for Trademark Protection? 

In order for intellectual property to receive trademark protection, it must meet two requirements: 

  1. That it’s used in commerce (or you have a good-faith intent to use it in commerce).
  2. That it’s distinctive.

If two parties file at around the same time, the entity that files the application first gets priority.

As for the second element, a problem can arise if people use the term to refer to generic items. A classic example is the word aspirin. Initially, it was trademarked by Bayer in 1899 for its anti-inflammatory drugs. However, the term became synonymous with any over-the-counter anti-inflammatory medication. By 1919, it was no longer distinctive from competitors selling a similar product, so the trademark protection was revoked

Why Are Trademarked Terms Affected By Common Usage?

1976 Lanham Act (15 US Code §1065) establishes that “[N]o incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.”

In simple terms, you can’t trademark a word that’s commonly used to refer to things. And if your word is already trademarked, you can lose its protection. This has been a recurring theme for companies for decades. Some examples of entrepreneurs and businesses that have experienced this first hand include: 

  • Laundromat
  • Escalator
  • Dry ice
  • Linoleum
  • Cellophane
  • Zipper
  • Flip phone

These words have become commonplace; they are used as regular words in the English language, not about someone’s specific business idea. However, note that it may take a while for this to happen, as there are currently many words today that are commonly used to refer to items yet still hold trademark protection. Some of them include: 

  • Band-Aid
  • Kleenex
  • JetSki
  • Chapstick
  • Super Glue
  • Q-Tips
  • AstroTurf
  • Coke
  • Frisbee
  • EpiPen
  • Photoshop

What To Do To Prevent Brand Genericide

What these companies have experienced is known as brand genericide. While sometimes, there’s not much that a household name company can do to stop their trademark from becoming generic, there are action steps you can take to protect your brand: 

  1. Always use your trademark symbols (™,SM, or ®). 
  2. Have brand guidelines and always implement them. 
  3. Educate your team and audience through training and marketing campaigns — and never use your trademarked word as a verb. 
  4. Monitor the usage of your company’s name (you can set up Google alerts and use social media management tools). 
  5. Send cease and desist letters if you notice misuse. 

Being proactive about preventing brand genericide is crucial since intellectual property can significantly affect the valuation of your business

If You Need Legal Advice About Trademark Protection, Sanchelima & Associates Can Help

Sanchelima & Associates, P.A. is one of the leading intellectual property law firms in South Florida. With over 40 years of experience, we have represented the IP interests of a wide array of businesses, including Fortune 500 companies — and we can do business in the United States and internationally. Whether you need a consultation or prosecution of a patent, trademark or copyright, we can protect your business’s interests. 
Contact us to schedule an appointment.

Share on facebook
Share on twitter
Share on linkedin
Share on pinterest