By Vanessa James
“We’re a company that’s so successful and everywhere you go, you see a scratchy, hairy fastener and you say…
Hey, that’s Velcro.”
So begins the recent Youtube video Velcro released on September 25, 2017. In an effort to protect itself against genericide—an intellectual property term that means the retraction of a trademark because the brand name has become synonymous with the type of product—Velcro released a video pleading with the public to stop saying “Velcro” and start instead saying “hook and loop.”
It may seem innocuous to use brand names to describe products associated with the brand, but this is actually often a red flag that the brand could potentially lose its trademark. For instance, when was the last time you drank from a “vacuum flask,” walked on a “moving staircase,” or went to a “coin laundry shop?”
Velcro, which was first registered as a trademark in 1956, is trying to avoid losing its trademark, as did thermos, escalator, laundromat, yo-yo, aspirin, and pilates. The purpose of a trademark is to uniquely distinguish the goods or services of a company and to help consumers identify the source of a product. When a trademark becomes synonymous with a class of goods, it no longer helps consumers to understand which company made the product. If this happens, the trademark may be cancelled by the U.S. Patent and Trademark Office. Once a trademark is cancelled, the mark can no longer be used to prevent others from using the same mark to describe their products.
One factor courts consider when determining whether a trademark has become generic is whether the owner attempted to educate the public on the proper use of the mark and the generic name for the goods. Enter Velcro’s video. Ad campaigns like Velcro’s have a record of successfully stopping brands from losing their registered trademarks. Campaigns for Xerox (a 2003 advertisement from photocopier firm Xerox read: “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache), Jeep, and Band-Aid saved those trademarks from becoming generic. Johnson & Johnson changed its marketing jingle from “I am stuck on Band-Aids, ’cause Band-Aid’s stuck on me” to “I am stuck on Band-Aids brand ’cause Band-Aid’s stuck on me.” Chrysler turned to the term “SUV” instead of “Jeep.” The Dow Chemical Company, which makes a well-known “line of extruded polystyrene foam products,” has worked to remind consumers coffee cups are not made of Styrofoam.
Another recent example of a company fighting to save its trademark comes from well-known jewelry chain Tiffany & Co. Tiffany initiated a legal battle with U.S. wholesaler Costco when Tiffany claimed that Costco infringed its trademark by selling “Tiffany” engagement rings. In retaliation, Costco argued that the jewelry firm’s trademark was no longer valid because “Tiffany” had become a generic term for solitaire-style rings. Judge Swain of the United States District Court for the Southern District of New York determined that Costco did in fact infringe on Tiffany’s trademark and awarded Tiffany $11.1 million plus interest in addition to $8.25 million punitive damages. For now, producing a simple, fun Youtube video is far less costly way for Velcro to protect its trademark.