Confessions of a Trademark Junkie

It’s been awhile since I’ve provided commentary on the blog but after attending a local marketing presentation, I just had to share my two cents about the event. 

“Hey Emily!  What are you up to next Tuesday?  Let me tell you – I just signed you up to attend a marketing presentation.  It will be a good experience for you and you may pick up a few tips on branding.” 

Little did I know but the President of our firm signed me up to attend a marketing presentation conducted by a local news station at a nearby hotel.  Sounds interesting.  I’m game for learning new things.

I arrived only to be greeted by an account executive, a woman who shall remain nameless, that claimed she “researched” our “company” before the event “but couldn’t seem to remember what our website said.”  Since she obviously did not read our website, she will likely not read this article nor be ashamed that I am now revealing this information about her.  “What is a codding?” she asked.  I just chuckled.  Not a great way to start a sales pitch — Ay yay yay.

This account executive was whisked away to attend to another guest.  Although everyone else in the room was paired with another account executive, I was now left alone.  I was then approached by another account executive – AE #2, but who’s keeping track?  He started to lay the sales tactics on thick, explaining the marketing program to me and the wonderful opportunities television advertising could offer to our firm.

Luckily, after a few minutes, we were directed to a second room where a presentation was about to begin.  (At this point I had an eerie flashback to sorority rush – is there a skit about to take place?)  A third, yes third, account executive introduces himself to me.  We sit down to watch a video presentation about television marketing. 

After the video presentation, a PowerPoint presentation begins.  The speaker talks about how television marketing can raise consumer awareness of your brand.  I perked up when he flashed a bunch of trademarks up on the screen.  Sadly though, he lost me when he started to explain brands as generic source identifiers. 

“What is this?” he said as he pointed to a picture of some cell phones and MP3 players.  “iPhones and iPods” someone said.  “When your little one gets a ‘boo-boo,’ what do they ask for?” he asked.  “A Band-Aid.”  “Exactly,” he says, “they don’t ask for a self-adhesive strip, they ask for a Band-Aid.” 

I spent the next five minutes explaining to my third account executive that local television advertising is probably not the appropriate avenue to advertise our law firm’s services.  Once he got the hint that I was not prepared to sign on the dotted line, we spent the next ten minutes or so discussing the dichotomy between brand awareness and single-source brand awareness. 

There is an unfortunate disconnect between marketing and legal (particularly trademark) departments.  This was evident in the presentation I had just witnessed.  During the presentation, the speaker genericised each trademark he discussed, referring to all MP3 players as “iPods” and all self-adhesive strips as “Band-Aids.” 

I think Johnson & Johnson’s trademark attorneys would have groaned when the presenter referred to their products as Band-Aids, rather than Band-Aid® brand adhesive bandages.  Has all their hard work been ignored?  What about their catchy theme song?  “I am stuck on Band-Aid® Brand cause Band-Aid®’s stuck on me.” 

I asked the third account executive if he understood that trademark rights could be completely lost if a brand becomes generic.  Brands like Aspirin, Escalator, and Trampoline are a few examples of things that were once brands but are now simply generic terms for acetylsalicylic acid, moving staircases, and rebound tumblers. 

From a trademark perspective, while we would like for people to be aware of brands, what’s equally as important is that people know that the brand represents a single source and not a generic line of products.  We want people to think of only one source or one company when they think of Band-Aid® brand adhesive bandages.  We want people to know that the brand of self-adhesive bandages that they can trust is Band-Aid® brand adhesive bandages because the brand stands for quality and consistency.  When you buy Band-Aid® brand adhesive bandages, you know that it will protect your little-one’s boo-boos.

“So how can we do this,” the third account executive asked. “How can we raise consumer awareness while at the same time, point to only one source of those products?”

Start with making sure that the company itself is properly using the brand.  There are few rules for proper trademark usage that should be shared with the advertising and marketing department so that everyone is on the same page. 

Rule number one — never use a trademark as a noun and stay vigilant in keeping others from using your mark as a noun.  For example, The Lego Company warns users against using the term LEGO® as a noun – if you enter the term “legos” into a search engine, the following statement would appear:

Using a trademark as a noun is a sure-fire way to transform your brand into a generic term for a particular type of product.  Consider the following – “My kids love to play with LEGOS.”  In the first example, the speaker could be referring to store bought bricks, The Original Toy CompanyTM bricks, Playskool® bricks, or LEGO® bricks since the speaker is using the term LEGOS to mean bricks.  To use the brand properly, the brand should be used as an adjective.  For example, the following would be appropriate – “My kids love to play with LEGO bricks.”

Another strategy companies can use to protect their brand names is to monitor and manage external usage of the mark.  You should educate the media about proper usage of your company’s brands and also send reminder letters and, in some cases, cease and desist letters to third parties who are incorrectly using your marks. 

If you find that someone is potentially infringing upon your company’s brands, you should perform some level of due diligence to protect what is, in many cases, a company’s most valuable asset – it’s reputation.

So, what did a trademark attorney attending a “sales dog and pony show” learn – well, raising awareness of your brand is one thing, but making sure that consumers associate that brand with only one source of products is another.  After all, what we don’t want, is for people to see our brand and think of a generic line of products.  We want our advertising to encourage people to buy our product, not just any product. 

Oh, and if you are still wondering what a Codding is, please check out our firm website at www.dunlapcodding.com.   

You may be interested in reading the following related posts:

1. Trademarks and Google* Searches
2. Test your trademark knowledge
3. Decline of Brands
4. LEGO My LEGOS – The Significance of “S”
5. TRADEMARK CLASS 678: MAFIA SERVICES

Posted by Emily E. Campbell, September 1, 2009 at 5:44 pm
Permalink: Confessions of a Trademark Junkie
3 Comments

Comments

On September 2nd, 2009 at 3:31pm Judith said…

I’d love to hear about your view of Google’s attempt to retain trademark while making google a verb.

With respect to Aspirin, it’s not a particularly good example of becoming generic as it was part of the reparations at the end of WWI.

On September 16th, 2009 at 3:04pm Emily Campbell said…

I apologize for not responding quicker. Interesting information. Is there somewhere I can find out more about the Aspirin trademark as a reparation of WWI?

In the 1921 case of Bayer v. United Drug Co., Bayer filed suit against United Drug Co. alleging that United Drug infringed Bayer’s trademark “Aspirin.” This raised questions as to the trademark protection held in the term “aspirin.” Ultimately, the court held that the term “aspirin” was a generic descriptor for acetyl salicylic acid. Thus, the term was part of the public domain. The court held that Bayer’s improper usage of the term Aspirin generated no association with the source of the drug (Bayer). Thus, the term did not function as a trademark and had no proprietary protection as a brand name.

As for the potential genericism of Google, I think Google should be cautious as to how people use their trademark. Nowadays when people say Google or Googled – it generically refers to performing a search on any search engine like Yahoo, Bing, or maybe Google. I think Google is well aware of the problem and has taken steps to prevent genericism of its marks. For example, their lawyers have asked many dictionaries to include notifications of trademark rights held in the term Google. You can see examples of this at Dictionary.com and The Word Spy. Maybe Google should take their genericism prevention efforts a step further. Maybe they should consider an advertising campaign to educate the public on this matter. What are your thoughts?

Hope you are having a great day!

On December 30th, 2009 at 2:59pm Ben said…

I don’t really find it convincing that LEGO brand bricks is necessarily more restrictively applied than ‘legos.’ As a kid I always referred to LEGO brand bricks exclusively as legos, and if a friend brought over TYCHO bricks neither of us would refer to them as legos, and if anyone had called them legos when I was around, I would have said “Those aren’t legos, those are tycho blocks.”

It seems to me that mimicry of a successful enough brand will result in brand confusion, name assumption, and push the brand into the public domain given time, and separating brand from product doesn’t do much to limit this. There are of course a variety of unique circumstances which inhibit or enhance this process.