In order to function as a trade mark, a mark must be capable of distinguishing one person’s goods and/or services from the goods and/or services of another. This is why generic or descriptive terms cannot be registered as trade marks.
However, it is important to note that obtaining a registration for your mark does not eliminate the risk of your mark becoming generic. In fact, there are already a number of cases where a trade mark that was initially considered distinctive, became generic over time and once this happens the owner loses their protective status over the mark.
Some well-known examples of distinctive marks that became generic over time are band-aid, cellophane, aspirin, escalator and linoleum.
Ironically, the main factor that contributes to a trade mark becoming generic is popularity. For example, band-aids were not always known as band-aids. It wasn’t until the Johnson & Johnson owned trade mark ‘Band-Aid’ became so popular that the words took on a generic meaning.
However, it should be noted that the success of a brand does not automatically lead to the brand becoming generic and below are a few tips on how to lower the risk of your trade mark from becoming generic:
- Always use the TM symbol or ® symbol with your trade mark to ensure that it is seen as a trade mark rather than a generic term.
- Always use the mark in conjunction with the generic name. For example if you were the owner of the KLEENEX brand, you would refer to “KLEENEX tissues”, rather than allowing people to refer to tissues simply as a “KLEENEX”.
- Always ensure that the mark is used correctly and avoid using variations of a trade mark as this can signal to consumers that improper use is tolerated. For example, do not allow abbreviations, plurals or apostrophes with the trade mark, or combine it with other words or marks.
If you have any further questions regarding generic words, please do not hesitate to contact us.