In-House Practitioners Idea Exchange, Genericide: Tips on How to Avoid Losing Your Brand Identity

INTA’s In-House Practitioners Committee hosted Idea Exchange sessions in January and February on Genericide: Challenges with Enforcement and Tips on How to Avoid Losing Your Brand Identity.

Alexandra De Neve (Velcro Companies, USA), Lisa Ulrich (IBM, USA), and Margaret W. Walker (Xerox Corporation, USA) led the discussions with in-house practitioners from a variety of countries and industries.

The Idea Exchanges included important tips and advice to help brand owners protect the identity of their brands. To accomplish this, brand owners must strike a delicate balance between the need to build consumer awareness of their brand, and avoiding brand ubiquity, which could in turn lead to genericide.

Genericide is often the result of trademark owners’ actions, or-as is more often the case-inaction. Failing to control internal misuse, as well as misuse by third parties, can be a dangerous recipe for the loss of trademark rights.

What Actions Can You Take to Avoid Genericide?

The Idea Exchange yielded the following practical tips on avoiding this problem:

• Properly use the mark in communications in accordance with trademark guidelines;
• Counsel marketing teams as to proper use;
• Monitor usage of the mark-by your own company and in the marketplace;
• Have an action plan, and send out regular notices regarding instances of misuse. (You are not required to act in all circumstances, but making a good faith effort to correct the misuse is important.);
• Utilize brand ambassadors: Everyone at your company, as well as your vendors, are all brand ambassadors who can help you ensure proper trademark use;
• Address dictionary misuses: Reach out to publishers to get any such misuse removed;
• Create and utilize consumer awareness campaigns. (A good example of this is Velcro Companies’ video that educated consumers about the proper use of their brand name.);
• Make sure your vendors/licensees understand the benefits of proper use, which is vital in maintaining the value of your brand;
• Understand that brand use may differ among various media channels (for example, Twitter feed vs. packaging vs. Facebook post). Be flexible and proactive in establishing guidelines for new media;
• If the use of the ® symbol does not appeal to your marketing team, educate them regarding the use of the term “brand” as an adjective to be appended to your brand name; and
• Take action appropriate to the situation. (Unintentional use by a fan should be handled differently than a third party’s deliberate misuse.);

Further Takeaways

• Genericide is a global issue, and it is important that brand owners tailor their actions in line with local laws and customs.
• Litigation is expensive. Brand owners should leverage their brand teams, social networks, blogs, and other channels to raise public awareness and increase public understanding of how to avoid the misuse of their trademarks. Brand owners should leverage their homepages to remind users of trademark rights by including tips for proper use.
• Brand value affects the bottom line. When seeking budgeting to fund consumer awareness programs, monitoring, or enforcement actions, be sure that senior management understands the importance of protecting brand value as an important driver of the company’s overall financial well-being.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association