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When was the last time you “vacuum-cleanered” your house, took a dip in a “whirlpool bath” or even used a “search engine” (as opposed to “googled it”)? OK, so the last one is not quite there yet (hence the explanation) but you get the picture.
The day your brand becomes a household name like this is surely one of the biggest successes your business can achieve right?
Well … not necessarily.
It would at first glance seem like this is the case but this could be the initial stages of your brand heading towards death row … well … in intellectual property law terms anyway.
To explain, if consumers understand the brand (i.e. the trademark) to be the name of the product itself, as opposed to identifying its exclusive source, that brand/trademark loses its “distinctiveness” which then opens the door for rival businesses to try and persuade intellectual property judges that they are entitled to use your trademark because it’s now an “everyday word” – queue … bye bye valuable trademark (potentially).
The biggest issue with this is, of course, that the brand is often the most valuable asset a company possesses and, if you get to the stage where you no longer have that, the brand is finished.
Jewellery chain Tiffany & Co is in the middle of a legal battle with US wholesaler Costco, which it has been accused of infringing its trademark by selling “Tiffany” engagement rings. Costco has fought back arguing the Tiffany & Co’s trademark is no longer valid because, “Tiffany” is now a generic term for the rings in question (i.e. solitaire-style comprising a diamond mounted on a single band with six prongs).
So did Tiffany & Co find sympathy in US district judge Laura Swain? To cut a long story short … NO. The district judge concluded there was a “genuine factual dispute” as to whether the trademark has a “primarily generic meaning in the minds of members of the general public”.
The Tiffany case is set for another hearing in mid 2014, but if it eventually concludes in Costco’s favour, Tiffany’s trademark for one of the world’s most famous ring settings would effectively be worthless!
Tiffany & Co would follow such brands as “Escalator, “Yo-Yo” and “Thermos” who have all seen their brands tossed onto the trademark rubbish dump.
Trademarks under threat?
So, what trademarks are currently under threat in today’s times?
• Xerox: owned by Xerox but should be called … photocopier/copy machine.
• Hoover: owned by Hoover but should be called … vacuum cleaner.
• Taser: owned by Taser International but should be called … stun gun.
• Rollerblade: owned by Tecnica Group but should be called … in-line skates.
• Frisbee: owned by Wham-O but should be called … flying disc.
• Bubble Wrap: owned by Sealed Air Corporation but should be called … air bubble cushioning material.
For further information, contact Martin McKinnell at m.mckinnell@endeavour.law
Disclaimer
This article is © Endeavour Partnership LLP 2014 and may not be reproduced without our express permission.
This article is a general summary and should not be relied upon in the place of seeking professional advice in respect of any specific situation.
No responsibility can be accepted for any actions based on the information in this article.
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