did you know, there's a trademark graveyard ?*

*disclaimer: this writing is absolutely not mine. i found this article in one of WIPO magazine, and i thought the topic was quite interesting and i want to share it to everyone who's interested in IP. this article itself first published in the INTA Bulletin, the biweekly newsletter of the International Trademark Association, and it is written by Timothy J. Lockhart, Willcox & Savage P.C. (US) and member of the INTA Bulletin Features - Policy & Practice Subcommittee. Enjoy :)


cellophane. escalator. zipper. once they were trademarks; now they are not. what happened ? each mark became so popular that people began using it as the generic name for the product it branded - cellulose sheets, powered stairs and sliding fastener in this case - and eventually the mark became the name for that product. in other words, the mark died and was buried in the "trademark graveyard."

that graveyard actually exist - it is called a dictionary, which is where a former mark may officially appear as a generic name. in fact. Merriam-Webster's Collegiate Dictionary (in its 10th edition) gives the derivation of the word as "zipper, a trademark." that dictionary also shows that "thermos," (*yes, i was surprised also reading this :D) a long-time generic in the US for vacuum-insulated containers, was originally a trademark.

but trademark rights may vary country by country, so THERMOS still receives protection as a trademark in some jurisdictions - the UK for example. similarly, Canada still regards YO-YO as a trademark for a brand of the popular spinner-on-a-string, even though a US court declared it a generic term for such toys over 40 years ago.

trademark owners sometimes put their marks on a "health maintenance program," running advertisements to remind the public the marks are not generic names and should not be used as such. xerox corporation's "anti-genericide" ads are perhaps the best known, such as "when you use 'xerox' the way you use 'aspirin', we get a headache."

it humorously makes the point that the company does not want XEROX to become a generic term for photocopiers the way ASPIRIN did for pain relievers. as least in the US - ASPIRIN is still a mark in many places.

anti-genericide ads appear most frequently in publications aimed at writers and editors -Writer's Digest and Editor & Publisher, for instance - giving trademark owners a better chance of keeping generic use of their marks out of print, thereby avoiding the quickest route to the trademark graveyard.

another way to keep marks out of the graveyard is to ensure there is already a generic name for the branded good or service in question, even if the name has to be invented by the trademark owner - which could well be the case with a unique new product. examples include "correction fluid" for liquid WITE-OUT products and "inline skates" for ROLLERBLADE products. in fact, the Wikipedia entry for ROLLERBLADE carefully notes that "rollerblade is a type of inline skate" and that the term is a "registered trademark."

yet another technique for avoiding the graveyard is to consistently use the word "brand" between the mark and the generic name - for example, KLEENEX brand tissues and BAND-AID brand bandages. several of Johnson & Johnson's US registrations for its various BAND-AID trademarks include the word "brand" as part of the mark.

but even a careful owner may not be able to avoid a mark's death by genericide in certain places. although Xerox Corporation has kept XEROX from becoming synonymous with "photocopy" in much of the world, the mark has reportedly become generic in Bulgarian, Portuguese, Romanian and Russian (*is it ?)

Google Inc. seems determined not to let GOOGLE enter the graveyard even though the mark is often used, at least informally, as a generic term for conducting an internet search. in 2006 Merriam-Webster began defining "google" as a verb meaning "to use the Google search engine to obtain information about (as a person) on the World Wide Web," and the Oxford English Dictionary also includes the verb, although capitalized.

perhaps recognising that limited use of a mark as a generic name helps to show the mark's popularity, Google has indicated it does not necessarily object to the use of "google" to mean searches run with its proprietary engine. if use is restricted in that way, the mark is more likely to remain a mark, and a strong one at that.

for example, in the 1970s and 1980s the owner of the LEGO mark conducted a campaign to persuade customers to call its products "LEGO blocks" or "LEGO toys." although they continued to refer to LEGO brand products as "legos," customers did not use the term for competing products. so the LEGO mark has remained alive and well.

ironically, the most popular marks face the greatest threat of entering the trademark graveyard. so, as is the case when goods with a desirable brand are counterfeited, a generic problem is, in one sense, a sign of success. who knew the prospect of burying a mark would have a bright side ?