How Brand Name Loses Protection: Understanding Trademark Dilution

In the intricate tapestry of commerce, a brand name is not just a tag—it’s the essence of a company’s identity and market exclusivity. Yet, this bastion of uniqueness can falter, losing its protective armor.

From the famous mark of United Drug Co. to the suggestive marks of modern pharma companies, the journey of a brand name from prominence to genericide is fraught with risk factors.

This article delves into how brand name loses protection.

What is Trademark Protection?

Trademark protection is a legal mechanism that safeguards the distinctive signs, logos, names, or expressions that distinguish products or services from one entity from those of others.

It grants the trademark owner exclusive rights to use the mark in commerce, preventing others from using a similar identifier that could cause confusion among consumers.

This protection is crucial for maintaining a brand’s reputation, fostering consumer trust, and ensuring fair competition.

Trademarks are typically registered with a national or regional trademark office, providing legal recourse against infringement or unauthorised use, thus preserving the brand’s unique identity and value.

How Brand Name Loses Protection

In the world of business and commerce, a brand name is more than just a label—it’s the embodiment of a company’s reputation, quality, and identity.

However, there are circumstances under which a brand name can lose the protection it enjoys under trademark law.

Understanding these scenarios is crucial for businesses to maintain the exclusivity and value of their brand.

Here’s an exploration of how a brand name can lose its protective shield.

Genericide: The Victim of Its Own Success

One of the most notorious ways a brand name can lose protection is through ‘genericide.’

This occurs when a famous mark becomes so popular and widespread that it transforms into a generic term for the product or service it originally trademarks.

Famous examples include ‘Aspirin’ and ‘Escalator,’ which were once distinctive trademarks but became generic marks in connection with the applicable products due to their widespread use.

To prevent genericide, companies must actively manage and monitor the use of their valuable trademark, ensuring they are used as distinctive product identifiers, as adjectives rather than nouns or verbs.

Abandonment: Falling Out of Use

Trademark protection is contingent on the active use of the brand name in commerce.

If a company stops using a trademark for an extended period, typically three years or more, without intent to resume its use, the brand name is considered abandoned.

Once abandoned, the corporate brand protection is lost, and the mark in connection with the degree of protection it originally enjoyed becomes available for others to use.

Failure to Enforce: Losing Grip

Trademark owners have a legal obligation to enforce their intellectual property rights and protect their distinctive trademarks from unauthorised use.

If a company fails to take action against infringers, it risks weakening its trademark significance. Over time, this lack of enforcement can lead to the dilution of the brand name’s distinctiveness, ultimately resulting in the loss of trademark protection.

Improper Licensing or Assignment

Brands often license their trademarks to third parties or assign them to other entities.

However, if these processes are not conducted properly with clear terms and quality control measures, the brand name can lose its core trademark distinctiveness and, consequently, its legal protection.

It’s essential for companies to maintain control over how their brand names are used by licensees or assignees.

Your Mark Loses Distinctiveness

A trademark’s strength lies in its distinctiveness, its ability to stand out and be recognised as a symbol of a particular brand’s goods or services.

Over time, if a brand name becomes too familiar or commonly used in a broader context, it may lose its distinctiveness.

This can happen through a process called “dilution by blurring,” where the mark becomes associated with a variety of products or services, diluting its association with the original brand.

When a mark loses its distinctiveness, it becomes challenging to argue that it serves the primary function of a trademark, which is to identify and distinguish the source of goods or services.

Consequently, the mark may lose its trademark protection.

Non-Renewal: Missing Deadlines

Trademark registrations are not perpetual; they require periodic renewal.

If a company fails to renew its trademark registration within the stipulated deadlines, the brand name loses the benefits of federal trademark registration.

While common law rights may still apply, the brand name is no longer protected under the stronger federal trademark laws.

Negative Association: Tarnishing the Brand

In some cases, a brand name can become associated with negative or scandalous activities, leading to its tarnishment. This negative association can erode consumer trust and goodwill, weakening the brand’s distinctiveness and its trademark protection.

It highlights the need of businesses to protect their brand value and the practice among trademark owners to maintain the positive reputation of their valuable trademark.

These scenarios illustrate the importance of vigilance in corporate brand protection and the need for businesses to safeguard their distinctive trademarks to maintain the exclusivity and value associated with their brand name.

8 Iconic Brands That Lost Their Trademark Protection

8 iconic brands that lost their brand name legal protection are as follows:

1. Aspirin: Originally a trademark registered by Bayer, “Aspirin” was once exclusively used to refer to the acetylsalicylic acid produced by the company. However, over time, it became the common term for the drug regardless of the manufacturer, leading to its genericide.
2. Thermos: “Thermos” was once a trademarked brand name for vacuum flasks by Thermos GmbH. It became so synonymous with any vacuum-insulated container that it lost its trademark protection and became a generic term.
3. Linoleum: “Linoleum” was a brand name for a type of floor covering, trademarked by Frederick Walton. As the term became the generic name for all similar floor coverings, it lost its trademark protection.
4. Cellophane: The term “Cellophane” is derived from ‘cellulose,’ a fundamental component of plant cell walls, and ‘diaphane,’ meaning transparent. Invented by the Swiss chemist Jacques E. Brandenberger and patented in 1912, its moisture-proof version was later developed by DuPont chemists in 1923. Although the term has become generic in the U.S., it remains trademarked in other countries. Notably, plastic wrap, often confused with cellophane, is actually made of polyvinyl chloride.
5. Yo-Yo: The yo-yo was trademarked in the U.S. in 1932 by the entrepreneur Donald F. Duncan. However, Duncan’s company lost its trademark rights in 1965 when a federal appeals court deemed the trademark improperly registered and thus invalid.
6. Escalator: The term “Escalator” was coined by Charles Seeberger of Otis Elevator Co. in 1900. Derived from the Latin word ‘scala,’ meaning steps, with the prefix ‘e-‘ and the suffix ‘-tor,’ it roughly translates to “traversing from.” Initially pronounced with the accent on the middle syllable, Otis lost the core trademark when it was deemed generic, partly because Otis itself used the term generically in its patents.
7. Laundromat: Coined by George Edward Pendray, the “Laundromat” was introduced by Westinghouse Electric in 1940 as the first automatic, wall-mounted washing machine. The trademark, last registered to Westinghouse in 1952, has since expired, though Westinghouse Nuclear maintains a historical page for the original company.
8. App Store: In 2011, Apple initiated a lawsuit against Amazon for its “Appstore for Amazon,” claiming potential consumer confusion. However, by 2013, Apple had abandoned both the trademark claim and the lawsuit.

Judicial Review: Google’s Battle Against Genericization

In this pivotal case, a federal court scrutinised whether “Google” has transcended from a brand to a generic term for internet searching.

The controversy ignited when an individual registered domains incorporating “Google,” prompting legal action from the tech giant.

The defendant argued that “Google” had become generic, a claim the Arizona court dismissed due to insufficient evidence.

The ruling underscored that occasional public misuse doesn’t strip a trademark of its protection.

Google, vigilant in safeguarding its brand, actively dissuades the use of “googling” as a synonym for web searches, issuing cease and desist letters to violators.

Google’s trademark guidelines are stringent, mandating the use of “Google” solely as an adjective, accompanied by a generic term (e.g., GOOGLE search engine), and forbidding its use as a noun, verb, plural, or possessive form.

The creation of Alphabet Inc. in 2015 was a strategic move to shield the “Google” brand from genericization.

Even internationally, Google’s protective measures are evident, as seen in their intervention when Sweden’s Language Council attempted to introduce “ungoogleable” as a term for something unsearchable on the web.

Google insisted on clarifications to link the term explicitly to its search engine, emphasising its registered trademark status.

Through proactive strategies and consumer education, Google is staunchly combating the threat of genericization.

The Crucial Importance of Safeguarding Brand Name Distinctiveness

In the cutthroat arena of commerce, a brand’s name transcends a mere moniker—it’s a beacon of distinctiveness, a testament to quality, and a symbol of the trust consumers bestow upon a company.

Protecting this distinctiveness isn’t just a legal formality; it’s a strategic imperative for businesses aiming to thrive and sustain their market position.

Here’s why safeguarding brand name distinctiveness is paramount:

1. Consumer Trust and Recognition: A distinctive brand name, often achieving secondary meaning, is synonymous with the company’s reputation. It’s the first thing consumers recognise and a key factor in their purchasing decisions. When a brand name, originally trademarks, loses its distinctiveness, it can confuse consumers, erode trust, and diminish brand loyalty, potentially leading to trademark infringement.
2. Competitive Edge: In a world inundated with choices, a distinctive brand name can be a company’s strongest asset. It sets the brand apart from competitors and can be the deciding factor in a consumer’s choice. Losing this edge can mean losing market share to competitors and weakening trademark ownership.
3. Legal Protection and Exclusivity: A distinctive brand name enjoys legal protection, preventing others from using similar names that could cause confusion. This exclusivity is crucial for maintaining a brand’s unique identity and market position. Without distinctiveness, a brand name can become a deprecated term, making it impossible to protect legally and putting protection at risk.
4. Brand Equity and Valuation: Brand distinctiveness directly contributes to brand equity—the added value a brand name brings to a product or service. This equity translates into real financial value and can significantly impact a company’s valuation. A loss of distinctiveness can lead to a direct loss in brand equity and, consequently, a company’s overall worth.
5. Marketing and Communication Efficiency: A distinctive brand name is a powerful tool in marketing and communication. It conveys a wealth of information about the brand’s promise, quality, and values. If a brand name loses its distinctiveness, marketing efforts can become less effective, requiring more resources to achieve the same impact.

Conclusion

Navigating the treacherous waters of trademark ownership is a major factor in a brand’s longevity.

As we’ve explored, from descriptive marks to the enforcement of trademark rights, the path to maintaining a brand’s distinctiveness is complex.

The extension of protection and degree of protection are pivotal in safeguarding a brand from becoming a generic mark or an interchangeable product.

For any original company, understanding these dynamics is crucial to ensure their famous mark doesn’t become a footnote in the annals of commerce.

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