What you don’t know about trademarks
The two articles that follow were first published in the INTA Bulletin, the biweekly newsletter of the International Trademark Association. In the first, readers will discover that they all draw from the trademark graveyard and may even have contributed to trademark deaths. In the second, they will learn that dead trademarks can come back as zombies. Both articles were written by Timothy J. Lockhart, Willcox & Savage P.C. (U.S.), and member of the INTA Bulletin Features – Policy & Practice Subcommittee.
Did you know…There’s a Trademark Graveyard?*
Escalator. Zipper. Cellophane.Once they were trademarks; now they are not. What happened? Each mark became so popular that people began using it as the generic name for the product it branded – cellulose sheets, powered stairs and sliding fasteners in this case – and eventually the mark became the name for that product, at least in the U.S. In other words, the mark died and was buried in the “trademark graveyard.”
"When you use 'xerox' the way you use
'aspirin,' we get a headache."
That graveyard actually exists – it is called a dictionary, which is where a former mark may officially appear as a generic name. In fact, Merriam-Webster’s Collegiate Dictionary (10th ed.) gives the derivation of the word zipper as “Zipper, a trademark.” That dictionary also shows that “thermos,” a long-time generic in the U.S. for vacuum-insulated containers, was originally a trademark.
But trademark rights vary country by country, so CELLOPHANE and THERMOS still receive protection as trademarks in some jurisdictions – the U.K., for example. Similarly, Canada still regards YO-YO as a trademark for a brand of the popular spinner-on-a-string, even though a U.S. court declared it a generic term for such toys over 40 years ago.
Maintaining trademark health
Trademark owners sometimes put their marks on a “health maintenance program”, running advertisements to remind the public the marks are not generic names and should not be used as such. Xerox Corporation’s “anti-genericide” ads are perhaps the best known, such as “When you use ‘xerox’ the way you use ‘aspirin,’ we get a headache.” It humorously makes the point that the company does not want XEROX to become a generic term for photocopiers the way ASPIRIN did for pain relievers. At least in the U.S. – ASPIRIN is still a mark in many places.
Anti-genericide ads appear most frequently in publications aimed at writers and editors – Writer’s Digest and Editor & Publisher, for instance – giving trademark owners a better chance of keeping generic use of their marks out of print, thereby avoiding the quickest route to the trademark graveyard.
Another way to keep marks out of the graveyard is to ensure there is already a generic name for the branded good or service in question, even if the name has to be invented by the trademark owner – which could well be the case with a unique new product. Examples include “correction fluid” for liquid WITE-OUT products and “inline skates” for ROLLERBLADE products. In fact, the Wikipedia entry for ROLLERBLADE carefully notes that “Rollerblade is a type of inline skate” and that the term is a “registered trademark.”
Yet another technique for avoiding the graveyard is to consistently use the word “brand” between the mark and the generic name – for example, KLEENEX brand tissues and BAND-AID brand bandages. Several of Johnson & Johnson’s U.S. registrations for its various BAND-AID trademarks include the word “brand” as part of the mark.
Avoid the graveyard
But even a careful owner may not be able to avoid a mark’s death by genericide in certain places. Although Xerox Corporation has kept XEROX from becoming synonymous with “photocopy” in much of the world, the mark has reportedly become generic in Brazil, Bulgaria, Romania and Russia.
Google Inc. seems determined not to let GOOGLE enter the graveyard even though the mark is often used, at least informally, as a generic term for conducting an Internet search. In 2006 Merriam-Webster began defining “google” as a verb meaning “to use the Google search engine to obtain information about (as a person) on the World Wide Web,” and the Oxford English Dictionary also includes the verb, although capitalized.
Perhaps recognizing that limited use of a mark as a generic name helps to show the mark’s popularity, Google has indicated it does not necessarily object to the use of “google” to mean searches run with its proprietary engine. If use is restricted in that way, the mark is more likely to remain a mark, and a strong one at that.
For example, in the 1970s and 1980s the owner of the LEGO mark conducted a campaign to persuade customers to call its products “LEGO blocks” or “LEGO toys.” Although they continued to refer to LEGO brand products as “legos,” customers did not use the term for competing products. So the LEGO mark has remained alive and well.
Ironically, the most popular marks face the greatest threat of entering the trademark graveyard. So, as is the case when goods with a desirable brand are counterfeited, a genericide problem is, in one sense, a sign of success. Who knew the prospect of burying a mark would have a bright side?
Did You Know...There Are “Zombie” Brands?**
Brands are born. Brands die. But some brands come back to life – often a different life – sustained by residual goodwill in consumers’ minds. Examples include ATARI, IRIDIUM and NUPRIN, each of which is now used differently from when it first became popular. Dead or dying brands considered for revitalization are called ghost brands, orphan brands and – perhaps most fittingly given their prospective “reanimation” – zombie brands.
The growing number of trademarks has significantly increased the potential value of zombie brands. A company that can successfully revive a zombie brand, with its residual value – sometimes high – of “brand equity,” can save the hundreds of thousands that would otherwise be spent on educating the public about a new brand.
Why do brands become zombies? Often because a single company has two competing product lines, whether through corporate mergers and acquisitions or for other reasons, and decides to divest itself of one. For example, Procter & Gamble once owned the WHITE CLOUD mark for bathroom tissue but, because it also owned the mark CHARMIN for the same goods, decided to discontinue using the WHITE CLOUD mark. Another business began using the mark and concluded a licensing deal with Wal-Mart, so that WHITE CLOUD tissue is now sold exclusively in Wal-Mart stores.
A U.S. company that specializes in acquiring and reviving dead brands helped bring NUPRIN (for pain medicine) and EAGLE SNACKS (for snack foods) back to life. River West Brands LLC, founded in Chicago in 2001, is now evaluating how to reintroduce BRIM for coffee. The company’s research shows that nine out of ten U.S. consumers over the age of 25 still remember BRIM as a trademark for coffee, largely because of the highly successful advertising slogan “Fill it to the rim – with Brim!” What many consumers may not remember, however, is that BRIM was formerly a mark for decaffeinated coffee. A reintroduced BRIM brand is likely to cover caffeinated coffee and perhaps other coffee products. So zombie brands can have value not only thanks to brand equity but also because consumers tend to remember the marks better than the particular goods or services they identified.
The BrandlandUSA blog lists “100 Dead Brands To Bring Back” along with reasons why. These marks include HOT SHOPPES, KRESS and (perhaps less persuasively) STUDEBAKER. In July 2007, the blog spotlighted WOOLWORTH’S as its “Dead Brand of the Month,” noting that the mark was still alive in some countries but not in the U.S., its home country.
For companies hoping to capitalize on brand equity in dead or dying marks, coming across a zombie may be an instructive, not scary, experience.
For more detailed information see “The Zombie Trademark: A Windfall and a Pitfall” by Jerome Gilson and Anne Gilson LaLonde in INTA’s law journal The Trademark Reporter (R) Vol. 98 No. 6 (November-December 2008).
* Reprinted with permission from INTA Bulletin, Vol. 63, No. 923 – December 15, 2008, © 2008 the International Trademark Association
**Reprinted with permission from INTA Bulletin, Vol. 63, No. 14 – August 1, 2008, © 2008 the International Trademark Association.
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