I have met trademark owners that are thrilled when their trademark has become part of the language as generic term. They regard it as undisputable evidence that they are a market leader and that their product is a great success. The thrill, however, quickly fades when the consequences of degeneration are realized.
The loss of a trademark to degeneration is a massive failure from a marketing aspect and often a major financial problem. The trademark is the bearer of the collected renown achieved under the mark, perhaps the sum of decades of work. Here we can include the value of the quality of the product, the cost spent on marketing and the recognition obtained in the marketplace. When a company is subject to an evaluation the trademark usually represents the majority of the company’s total value, sometimes up to 80% or more. To lose such a trademark to degeneration is to lose this value.
A degenerated trademark becomes part of the general language and is then available for everyone. This includes all competitors that are free to use the word and, accordingly, take advantage of the renown and value held by the previous trademark. For the trademark owner it’s like your private garden suddenly becomes a public park. Anyone can enter and you might as well take down the fences once degeneration is a fait accompli.
Not only do you lose the sole right and value connected to your previous trademark, you are probably still in need of a trademark to communicate in the marketplace. So you need to start over with trademark clearance, registration procedures and all the headaches and costs that this can entail.
So, what can you do to avoid this type of trademark failure? Well, it’s not easy to halt the process once the trademark has started to become a part of the general language. In very few cases degenerated trademarks have been restored to trademark status by massive marketing activities. Jeep comes to mind. However, most trademark owners lack the muscles for such an endeavor.
Instead, it is important to think ahead and to make smart choices already when you select your trademark.
- Choose a trademark that is not in risk to be regarded as a generic word. For instance, very short trademarks for products with very long generic names are at high risk, simply because people are likely to choose the word that is easier to use.
- If your product is new and lacks a generic description, make sure that there is a proper generic word that the language can adopt instead of your trademark. If necessary, invent one and communicate it.
- Always use your trademark as a name. Start with a capital letter and never put the mark in plural form.
- Use the symbols ® and ™
- Establish clear trademark guidelines and make sure that they are followed.
Kristina Fredlund, European Trademark Attorney