Fenwick intellectual property and technology litigation chair Jed Wakefield was interviewed by Marketplace on how companies can avoid losing their trademark – as happened to Trampoline – because their brand name has become a general term for a type of product.
One strategy is regularly reminding competitors and others that your name is trademarked while also promoting an alternative term for generic usage.
“A classic example is Xerox,” said Wakefield, who also chairs Fenwick's trademark litigation group. “Xerox years ago used to advertise to remind the public that Xerox is a brand name for a photocopier and it’s not a generic term for making a photocopy.”
Another approach is taking legal action as needed to reinforce a trademark’s exclusivity, while also enjoying the benefits of its popularity.
For example, Wakefield noted, FedEx might tolerate commonplace use of the phrase “I’ll FedEx that to you,” as promoting its brand. But taking a stand against some usages may be critical to avoiding a trademark’s “genericide,” as IP lawyers call it.
“We counsel clients on where to draw the line, and ultimately where you draw those lines is as much a business question as a legal judgment,” Wakefield told Marketplace.