by Yotam Werzansky-Orland, Esq.

Trademarks and branding are closely related because trademarks are often used to brand a product or service. A company may use a trademark as part of its branding strategy to create an association in the consumer’s mind between the trademark and the company’s goods or services. For example, the Nike “swoosh” trademark is closely associated with the Nike brand and is used on all of the company’s products and marketing materials. However, marketing and branding managers should be aware of the risk of brand genericization which is the phenomenon of turning brands into generic terms. This phenomenon is sometimes seen as a compliment (because “everyone knows me”), but in fact is what frequently considered to be a “brand killer”.

This is a paradoxical process: as the brand name becomes more common among consumers, the value of the brand increases, up to a certain point where it becomes too common, and too identified with the entire category of goods or services, and then its value as a brand decreases.

Branding refers to the overall strategy that a company uses to create an identity and image for its products or services. It involves the use of various marketing and communication tools, such as advertising, packaging, and design, to create a consistent and recognizable brand experience for customers.

A successful brand typically includes a recognizable logo and a consistent set of branding elements, such as colors, fonts, and imagery, which are used consistently across all marketing materials and touchpoints.

A trademark, on the other hand, is a word, phrase, symbol, or design that identifies and distinguishes the source of the goods or services of one party from those of others. Trademarks can be registered with the government to give the trademark owner legal protection and the exclusive right to use the trademark in connection with the goods or services for which it is registered.

One risk of using trademarks as part of a branding strategy is that the trademark may become genericized. This occurs when the trademark becomes so widely used to refer to a type of product or service that it loses its distinctiveness and can no longer be protected as a trademark.

For example, “Kleenex” was originally a brand name for a brand of facial tissue, but it is now commonly used to refer to any brand of facial tissue. Similarly, “escalator” was once a trademark for a specific brand of moving stairway, but it is now used to refer to any type of moving stairway, and the trademark is no longer protected.

There are several ways that companies can prevent the genericization of their trademarks:

1. Use the trademark as an adjective rather than a noun: For example, “Kleenex tissue” rather than “Kleenex.”
2. Use a trademark symbol (such as ® for registered marks or ™ in general) to indicate that the mark is a trademark.
3. Educate the public about the proper use of the trademark: Companies can use marketing and advertising campaigns to educate consumers about the proper use of their trademark and the importance of distinguishing it from the common name for the product or service.
4. Enforce the trademark rights: Companies can take legal action against others who use their trademark in a way that is likely to cause confusion or dilute the distinctiveness of the mark.

In conclusion, brand genericization is the process by which a brand name becomes so well-known and commonly used that it becomes a generic term for a product or service. This can occur when a brand becomes the dominant player in its market, or when it has been around for a long time and becomes the default term for a particular product or service.

While brand genericization can be a positive development for a company, it can also be a risk as it can lead to the loss of trademark protection and the dilution of the brand’s value. Companies must carefully consider their branding strategies to avoid becoming too generic and losing their distinctiveness.

*Yotam Werzansky-Orland was chosen among the top 300 innovation & IP strategists worldwide “who are leading the way in the development and implementation of strategies that maximize the value of IP portfolios.” IAM Strategy 300, 2018, 2019, 2020.

References

Cohen, D. 1991. Trademark Strategy Revisited. Journal of Marketing, 55(3), pp. 46-59.

Cova, B. 2014. Re-Branding Brand Genericide. Business Horizons, Vol. 57(3), pp. 359-369.

Ingram, J. D. 2004. The Genericide of Trademarks. Buffalo Intellectual Property Law Journal, 2(2), pp.154-163.

Jain, D. 2021. Genericization of Trade Marks: An Indian Perspective on Challenges Posed and Potential Solutions. Journal of Intellectual Property Law & Practice, Vol.16(8), pp. 785–800.

Tembo, C. N. 2017. Generic Trademarks in Action – The Two-Edged Sword of Branding Success. Journal of Lexicography and Terminology, Vol. 1(2), pp. 107-123.

Walsh, M. G. 2013. Protecting Your Brand against the Heartbreak of Genericide. Business Horizons, Vol. 56(2), pp. 159-166.