Brand Guidelines Help Maintain Trademark Protection
Brand guidelines are an essential part of sustaining brand protection. Creating an effective brand guide begins with establishing and adhering to proper trademark use by the brand owner, lest trademark protection is lost if the brand name becomes a noun for your product i.e., a generic trademark. Brand guidelines are also important to establishing and maintaining brand authenticity and brand legitimacy by creating consistency as presented to the public.
Trademark owners are required to monitor the use of their marks by third parties. For this reason, a brand manual is vital to the health of your brand. Brand guidelines instruct affiliates, distributors, licensees, and marketing and advertising team members. The Brand Guide teaches and prescribes how to use your trademarks in media as well as in marketing and advertising. Along with brand guidelines, the trademark owner must on occasion monitor the use of their trademarks by the media, the public, and related parties in order to prevent risks from spiraling beyond control. Many major brands also have a written social media policy to define the scope of use of registered trademarks in social media. But are social media policies enforceable by employers?
Your mark becomes a “generic trademark” free for anyone to use.
The greatest threat is when an otherwise strong distinctive trademark becomes a generic trademark. (This term is an “oxymoron” since a generic term is the opposite of a trademark).
If you have to sue someone for poaching your brand, it’s your dirty laundry that could cause you to be “hung by the tongue.
There is no better example of a brand that focuses on the trademark use of its trademarks than Xerox Corp. Xerox is well known for having turned directly to the public to assist in monitoring its trademark use. In effect, Xerox created a brand guide for the public! Its ad campaigns asked the public to help prevent the Xerox mark from becoming a generic trademark. How? By making certain to include the generic term “photocopier” instead of co-opting “Xerox” as a verb. The Xerox brand is not a substitute for the action of photocopying.
The Xerox campaigns worked, and the Xerox brand is alive and well. But then the “trademark graveyard” is filled with other former trademarks whose brand life was cut short. Elevator, escalator, pilates, and cellophane are but a few.
Your Trademark Use Can Cause Loss of Trademark Protection
Consider the following types of evidence an opponent will trot when you attempt to enforce trademark rights. An opponent will almost certainly attempt to prove your brand name has become a generic trademark or a descriptive trademark. The result: your trademark lands in the trademark graveyard, free for all to use to describe your product or service.
Competitors’ Use. Monitor trademark use by competitors. Use of your mark as a generic term without your objection is admissible as evidence of acquiescence and loss of rights.
Your Own Use. If you have been using your trademark as a generic trademark, your opponent can use this evidence to prove “genericide.” You may be surprised to learn brand counsel spends a lot of time counseling clients to mind their own brand names.
Dictionary Definitions. Dictionary definitions are persuasive and you should monitor trademark use in dictionaries. For example, if an online source is mistakenly using your mark in a generic sense, politely let the site owner know! If Wikipedia has it wrong, promptly correct it by editing the page.
Media Use. If a mark is used incorrectly in the media, nicely advise the source of the proper use.
Naked Licensing. Monitor use of your trademarks by affiliates. A brand owner who allows distributors or licensees to use a mark with no written brand guidelines governing use is at risk.
We represent a number of brands providing training and certification in the area of life improvement. Allowing graduates to use brand names without a written agreement is almost certain to lead to claims that the mark has become descriptive. This risk is eliminated with a brand guide together with a written trademark license agreement.
Trademark examiners routinely perform Internet searches when examining a trademark application. When they see multiple users of an applicant’s mark displayed in search engine results (other than the applicant), a rejection on the grounds that the mark is descriptive or generic is almost certain to ensue. Why? This is evidence that the mark is in widespread common use by the public, and descriptive trademarks do not qualify for trademark protection.
Brand Guidelines Save Trademarks from becoming a Descriptive Trademark, or worse, a Generic Trademark
XEROX® and REALTORS® are two examples whose trademarks faced the risk their brand names were on the way to becoming generic trademarks.
In 2004, the National Association of Realtors (NAR) faced a challenge to its REALTOR® mark, a mark used to signify membership in the trade association. The case is a textbook example of how to mind your own language when it comes to trademark use!
The REALTOR mark was alleged to be a generic trademark, i.e. it had become a common term to for real estate brokers. Who hasn’t said or heard someone say, “Who is your realtor?” Yet, the NAR successfully defended against the challenge, primarily because its efforts to educate the public persuaded the court the mark had not become generic. Like Xerox, NAR took charge and control of the market before the loss of rights occurred. The REALTOR Brand Guidelines are published on the NAR site and offer a great example of how to create your own brand manual.
Here’s a key fact the Court found that allowed NAR to successfully defend its mark.
Respondent issues guidance containing specific rules for use of the REALTOR® marks and name. This guidance outlines limitations on the use of the REALTOR marks and logo and provides graphic representations of correct and incorrect uses of the logo, in print, in advertisements and on the Internet. For the benefit of its member associations and individual agents and brokers, its web pages contain “Graphics Standards and Style Guidelines.”
The above quote says it all. Treat your own brand names with the respect they deserve. Teach others to do the same. Someday, you may wish you had—or like NAR’s REALTOR mark, be happy you did.
I asked Margaret Walker, Global V-P of Intellectual Property at Xerox about the origins of the Xerox brand name:
Q. You mentioned that Xerox is a created name. We hear branding lawyers sometimes use the term coined or fanciful. Is this what you were referring to?
A. Exactly. Unlike a name that already exists (like Apple, which was in the lexicon and used in an arbitrary way), the strongest trademark is marked that are fanciful or coined. This means you create it. The name does not exist prior to your creating it. Xerox was created from the word xerography, a Greek term meaning dry writing. Chester Carlson was a patent attorney who was smart enough to know at the time that he needed to have a very strong trademark. He went out and he created one. A coined mark is entitled to the strongest form of trademark protection.
Q. When there is a product as unique as the photocopy machine and the product became so ubiquitous in our society isn’t there a risk?
A. The need to manage and educate the consumer as to the proper use of your trademark as well as the generic term for the trademark is absolutely important. Hats off to those folks who knew enough when this product was first launched to not only come up with a strong trademark but also to come up with a generic for it. If the trademark is the adjective that modifies the noun, they needed to come up with a noun and they did. They came up with a “photocopier” or the “photocopier machine.” Then you have your trademark “XEROX photocopier” or “photocopy machine.” The risk is that when you do not come up with the generic noun for the product, the trademark itself becomes the noun. We are talking about a big issue here. Often, Xerox is used as the noun and that is not because we did not try to avoid it. The problem there is that Xerox was such a revolutionary product, the Xerox machine, it became sort of a victim of its own success.
When it’s time for you to register a name, review our Consumer Guide to the Best Trademark Service to make a smart choice.
