Velcro has begun a campaign to combat misappropriation of their trademarked name to non-Velcro fasteners and adhesive products. The company’s immense popularity has led to an intellectual property quandary that is unique to a handful of household brand-names like Clorox, Band-Aid and Kleenex. The ultimate plea from Velcro’s lawyers, is if consumers continue misusing the brand’s name, their “trademark will go away.”
Inside Counsel recently sat down with Matthew Nelles, partner with Berger Singerman, to shed light on the Velcro brand’s inventive, but vague campaign. Nelles is an IP and commercial litigator, with a great deal of experience in patent, copyright, trademark, trade secret and Internet liability cases. He shared the validity of Velcro’s claim that continued misuse of its name will void their trademark, the legal steps Velcro can take to better protect their IP, and the outcomes of similar trademark disputes involving other household brand-names.
Today, trademarks represent the source of a product or origin. For example, according to Nelles, when we hear the term “Home Depot,” we immediately associate that mark with a source, i.e. the large, warehouse-like hardware and appliance store that uses the color orange. There is a concept in trademark law referred to as “genericide” where a trademark that once represented the source of a product becomes so popular that it loses its ability to represent a particular source for a product or service.
“In other words, the trademark becomes, by popular usage, the generic term for a product or service,” he explained. “Generic terms are not protectable as trademarks because no one source can monopolize a generic term (e.g., Toyota must be able to use the word ‘cars’ to sell its product; but see ‘Apple’ for computers—protectable because Apple, while generic for a fruit, is arbitrary for computers).”
Over the years, the following trademarks have fallen to genericide and are no longer protected: Thermos, Ale House, Cellophane, Aspirin, Light Beer and Yellow Pages. On the other hand, Chicken Tenders, Teflon, Honey Baked Ham and Coke have survived genericism challenges. Typically, consumer surveys are used in order to determine whether a mark has become generic.
“In order to combat genericism, it is important not only for brand owners to use their marks in a nongeneric way, but also to educate the public to do so as well,” said Nelles. “Years ago, Xerox campaigned to educate the public to refer to its product as Xerox copies or Xerox copiers rather than just Xerox. Similarly, you will always encounter Kleenex referring to its product as Kleenex facial tissues to make it clear that Kleenex is the trademark, and facial tissue is the product.”
That analysis applies equally to Velcro, per Nelles. There is no doubt that consumers have popularized that trademark so that some consumers think of Velcro as a type of fastener rather than the maker of a fastener.
He said, “Since trademarks derive their value from the goodwill they represent, it is important for brand owners to exclude others from using their trademarks and profiting from the goodwill associated with the mark. And for that reason, and others, Velcro has undertaken a campaign to educate the public against using its mark as a generic term.”