The dictionary is filled with words that formerly were valuable and popular brands. Brands so powerful that they became “household words”: aspirin, brassier, cellophane, cube steak, dry ice, escalator, gold card, gramophone, ice beer, kerosene, lanolin, light beer, linoleum, mimeograph, nylon, pilates, raisin bran, shredded wheat, space shuttle, super glue, thermos, trampoline, yo-yo, and zipper. 

Each of these brands received the “death penalty” from the courts: a ruling that the brand owner no longer had the exclusive right to use the brand. 

Almost invariably, the owner of each of these brands did much to hasten its demise. They failed to follow the rules of trademark use. Companies such as AOL, Bayer, Duncan, DuPont, and King-Seeley all lost valuable brands as a result.

For a brand to have value, it must become a trademark so that the owner holds a monopoly over a symbol that the public could otherwise use. The government allows this monopoly because brands are essential to our system of commerce. Without them, a consumer would not know what to expect when buying a product, or who made the product. 

To retain their monopoly, brand owners have a responsibility to ensure that their brand represents their provision of their product instead of the name of the product itself. Once a mark ceases to answer the question “Where did this come from?” and starts to answer the question “What is this?” the government will no longer protect the trademark holder’s monopoly over using the brand.

In analyzing whether to allow a brand owner to retain a trademark, the courts generally engage in a two-step analysis. First, they determine if the brand answers the question “What is this?” instead of “Where does this come from?” Courts rely on various types of evidence in making this determination, including consumer surveys, media usage, and dictionary definitions. As a second step, courts then look at whether the brand owner used the brand in accordance with the trademark use rules. 

The courts have little sympathy for brand owners who fail to follow the trademark use rules, even if the brand owner violated the rules at a time when the brand had no chance of becoming generic. In fact, every one of the brand owners on the list above thought that their brands could never become generic. The owners of the “Yo-Yo” and “Trampoline” brands realized too late that things had gotten out of control and tried to make amends by following the rules. But courts have long memories. In the “Thermos” case, the court rendered its 1963 decision based in part on King-Seeley’s advertising from 1910! 

Every piece of advertising collateral a company creates today can impact the future survival of its brand. Following the trademark use rules outlined below will help insure a brand has perpetual value as an exclusive asset instead of no value as a generic term anyone can use. 

The following five rules obviously do not cover all the potential pitfalls of trademark law and brand marketing, but they cover the major areas where marketers should pay particular attention:

1. Do not trademark the name of the product. 
2. When using the brand in a sentence, always use the brand as a proper adjective.
3. When using the brand in a sentence, always distinguish the brand from the remaining text.
4. Do not give the brand a definition.
5. Do not confuse the brand with the company name.