What’s in a name? In trademark law it can depend on how it is used

By Tony Poland, LegalMatters Staff • Registering a catchy phrase or slogan as a trademark is not the simple matter it may seem and keeping it can be even more of a challenge, says Toronto intellectual property lawyer John Simpson.

As the holiday shopping season approaches, Simpson, principal of IP boutique Shift Law Professional Corporation, pointed to a German court’s recent revocation of the trademark “Black Friday” for various goods and services as an example.

According to reports, the term had been protected as a word mark by a German entrepreneur for several years, forcing retailers who wanted to use it to pay royalties. However, those opposed to the trademark argued it lacked distinctiveness and Berlin Regional Court agreed.

Simpson explains that trademark law was originally concerned with consumer protection.

‘Distinctive of one trade source’

“The law only protects trademarks to the extent that they are distinctive of one trade source,” he tells LegalMattersCanada.ca. “The purpose of a trademark is to help consumers identify where they are getting their goods or services from.

“It is only a right of someone who can demonstrate that their trademark distinguishes them from others in the marketplace.” 

In the case of Black Friday, it is a term known throughout the world, said those who successfully argued for the cancellation of the trademark registration in Germany.

Simpson says someone can come up with a catchy slogan, such as Black Friday, but if it becomes too commonly known “it no longer functions as a trademark.”

“Before long consumers cannot identify who was the first to coin the phrase. The originator has then lost any rights they may have ever had to it because whether it is their fault or not, others have started using it,” he says. “The originator is unable to stop others from using it based on any common law rights and they cannot register it as a trademark.

Trademark owners must police their rights

“It may seem unfair that others can use the term without being stopped,” Simpson adds. “However, the onus is on the trademark owner to police their rights and stop others from using it before it becomes non-distinctive. That applies to any phrase or slogan such as Black Friday.”

Slogans can create a lasting impression with consumers, he says. For example, when people hear of the term, Just Do It, Nike invariably comes to mind, Simpson says. 

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It is important to note that trademarks can only be registered with specified goods or services, he adds.

Even if a slogan or phrase is distinctive and can be registered as a trademark, that is only the beginning, he says.

“After you register a mark, you still must ensure you are protecting the rights in it,” Simpson says.

Ironically, a trademark can become so well-known that it can face its own demise, he says.

‘When a mark becomes a generic term, it is no longer a trademark’

“ When a mark becomes a generic term, it is no longer a trademark. This is what is known as genercide,” Simpson says. “The trademark becomes a victim of its own fame because people start using it as a common word or phrase. 

“Google is very much at risk of that. Instead of saying internet search, people say ‘Google it,’” he adds. “It is becoming more difficult for Google to say that the name should still be considered a registered trademark.”

Simpson says there are many examples of genericide, including ping pong, trampoline, zipper and aspirin.

“Xerox was pretty close to it. Instead of photocopying something, people referred to it as Xeroxing,” he says. “The company managed to save its registration for Xerox through an aggressive campaign to stop people from using their name as a verb.”

Margaret Walker, general IP counsel at Xerox Corporation, told the World Intellectual Property Review, that the company spends “a great deal of time trying to keep the brand strong and raise awareness that ‘Xerox’ is actually a registered trademark.”

“The strongest weapon in this fight is education. You need to draw a line between those that are out to infringe and to counterfeit our brand and those who are simply misusing a trademark as a verb and who perhaps don’t even know that it is trademarked,” she says.

The company went as far as appealing to dictionary publishers to define Xerox as a trademark and a business.

“Registering and keeping a trademark requires some effort and diligence,” says Simpson. “Simply having a pithy slogan is not enough.”