If you run a business, hearing that your brand name is so ubiquitous in your industry that people use it interchangeably for the product you sell would likely leave you looking for a bottle of champagne to uncork. You certainly wouldn’t think that your tremendous success would leave the intellectual property protection on your brand in jeopardy. However, this is just the predicament Tiffany—the famous purveyor of diamonds and jewelry—has found themselves in through an ongoing lawsuit they have brought against Costco.
Tiffany long-running legal dispute with Costco is over Costco selling rings labeled "Tiffany" at their warehouses. As you might imagine, as a particularly high end brand, Tiffany is not pleased with being associated with a bulk retail line and brought a trademark infringement lawsuit. Costco's argument in response to Tiffany’s allegations was that the term and trademark Tiffany has become interchangeable in the minds of the public with a specific style of ring. This would render the trademark generic when used on a particular style of ring--a concept known colloquially in trademark law as genericide--because becoming generic kills all the protection on the mark.
Just a few months ago, the court came out in favor of Tiffany on this argument—saving Tiffany’s trademark generic for now. Tiffany was awarded a whopping $8.25M in punitive damages, in addition to the $5.5M in normal damages.
Although Costco has lost for now, they have made it clear they will appeal the judgment. Once they do, Tiffany’s trademark will again be in jeopardy. So how exactly can a mark be so well known that it loses protection and what steps can you take to protect against your mark becoming generic?
What is Genericide
Trademark law itself provides protection to registered words or symbols used to represent a brand of good or service—guarding against others using the mark in a way that could confuse consumers as to source or sponsorship. It does this through trademarks, service marks, and a few other types of mark protection. Genericide, however, is an issue of the strength and registrability of a trademark.
The strength of a trademark is judged by its distinctiveness, the more distinctive the mark the greater protection it receives. A mark with an arbitrary relationship to the good it represents (such as Apple computers) or a totally made up word as a mark (such as Kodak) would receive the strongest protection and can always be registered with the Patent and Trademark Office (PTO). A mark that suggests a quality of the good it is a mark for, such as Greyhound describing a swift form of transportation, can always receive trademark protection but have less strength than a fanciful or arbitrary mark.
Below these types of marks on the protection totem pole are descriptive marks—marks that actually describe some part of the good or service. A good example of a descriptive trademark is All-Bran brand cereal, the brand actually describes the type of cereal sold. Descriptive marks may only receive protection so long as the mark is associated with the product or service in the eyes of the public. This is known as acquiring secondary meaning and generally takes some serious marketing and several years in the marketplace. Five years is a pretty common number to see in relation to acquiring secondary meaning, but it has more to do with the thoughts of the public than any hard and fast period of time.
Finally, the very bottom of heap when it comes to trademarks is—you guessed it—generic trademarks. Generic trademarks are marks that are actually the common name for the product or service sold. For example, Bread brand bread would be generic. Generic marks are can never be registered as protected trademarks in the first place.
This brings us to genericide. When a brand name becomes so well known that it is used interchangeably as a name for a class of product or service, so much so that they have lost their initial distinctiveness from that or service, that brand name has become generic. This kills the trademark, even if it started out as a totally arbitrary or fanciful term, because it means that the average consumer doesn’t think of your brand when they think of your brand name—they think of an entire class of product or service.
There have been several well-known brands that have fallen victim to their own success in this way. Aspirin, Band-Aids, Xerox, Linoleum and others have all been ruled generic even though they started out as brand names. Just a few years ago, Google narrowly avoided its own genericide case after a trademark case led to claims that Google had become a verb interchangeable with searching for something on the internet regardless of search engine.
Protecting Your Mark Against Genericide
Fortunately, there are a number of steps you can take to ensure your trademark avoids the fate of Band-Aids and the lawsuit headaches of Google and Tiffany. From your marketing to your legal strategies, avoiding genericide is all about preventative steps.
First, always use the type of product in conjunction with your name in describing your product. For example, Orowheat would describe itself as “Orowheat bread.” Second, always capitalize your trademark and try to use distinctive fonts, colors, and more to distinguish the mark. Third, never use your mark as a noun or verb, always as an adjective describing a type of product. Fourth, never describe your product in plural—you buy two Orowheat breads not two Orowheats. Finally, it is crucial to be vigilant of people using your trademark interchangeably with the class of product or service you provide and be prepared to object strenuously to such use. There is obviously a certain amount of word of mouth advertising that you get that encourages allowing people to discuss your product as the standard of your industry. However, it is important to strike a balance that errs in favor of keeping the protection on your mark alive.
This last point becomes especially important when you see competitors using your trademark to describe their product. This type use needs to be quickly addressed, first through communication demanding they cease and desist and then potentially through legal recourse.
Tiffany seems to be winning their argument against genericide. However, carefully monitoring how your mark is used can avoid the problem in the first place. Your trademark can be worth more than any diamonds, but you need to make sure that it keeps its distinctive shine.
Authored by Jonathan Lurie, LegalMatch Legal Writer and Attorney at Law