Preventing your trademark from becoming generic

Last updated: 17.12.2019. This publication fully complies with the provisions of the new Law on Marks and Geographical Indications, promulgated on 13.12.2019.

What are the basic functions of the trademarks?

The main function of the trademark is to indicate the origin of relevant goods or services or said with other words to indicate the manufacturer or provider of the goods or services.

What is brand genericide and how does it happen?

A trademark becomes generic when it takes a place in the minds of a large group of people in the society. This can be practically obtained when there is a market monopoly of the trademark in the relevant product category. Sometimes trademark owners allow their trademark to become a victim of its own success. It happens when the mark owner unknowingly takes part in the destruction of the distinctiveness of its trademark. If the trademark is used correctly, it shall be able to retain its main function to distinguish the goods and services of one manufacturer from those of another. The distinctiveness of the trademark is at risk when the improper use of the trademark starts to cause consumers to use the mark as the “name” of the product or service. This is why the owners of trademarks shall ensure that the mark will not become a generic description for similar goods or services, because in this case, it will lose its function to distinguish the goods and services and then it will be subject to revocation proceedings. According to Article 35, Paragraph 1, item 2 of the Law on Marks and Geographical Indications any party may request revocation of a registration if as a result of the action or inaction of the proprietor the mark has become a common name for the product or service in respect of which it is registered.

The trademark history knows the following trademarks to have experienced this fate of becoming generic: ESCALATOR, LINOLEUM, ASPIRIN, CELLOPHANE, THERMOS, LAUNDROMAT. This happens often with innovative products where the mark has been adopted as the product name.

How to prevent a trademark from becoming generic?

Effective and proper use of trademarks reduces the risk of revocation. Proprietors shall be sure that their trademarks are used effectively from the very first day. This section of the article presents practical tips that will prevent your trademark from becoming a common descriptive name and help to maintain its distinctive character.

1. The owners shall implement well-defined guidelines that serve as a protocol for the correct usage of their trademark and educate their employees, licensees, affiliates, and consumers.
2. Always use the trademark status with the “®” symbol (for registered trademarks) and “TM” symbol (for unregistered trademarks).
3. Do not alter the trademark.
4. Do not abbreviate the trademark.
5. The trademark shall not be used in a plural form.
6. The trademark shall not be used as a noun.
7. The trademark shall not be used as a verb.
8. The trademark shall be used as an adjective.
9. The general name of the product shall be used after the trademark.
10. Make the trademark stand out from the rest of the text by always highlighting the trademark by using capital letters, color or font.
11. The owner of the trademark shall check articles, periodicals, etc. to ensure that the trademark has been used correctly by third parties.
12. The owner shall commonly check dictionaries to ensure that the word is properly shown as a trademark.
13. The owner of the trademark should monitor the applications for registration of trademarks and oppose the registration of identical/similar marks.
14. The owner shall monitor third-party applications and oppose such marks if appropriate.
15. The owner shall take the necessary measures to prevent and stop any infringement of the trademark.

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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide more information about generic trademarks. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto.