A startup founder is able to create a new product category, only to lose it in federal court after other companies are allowed to legally take their exact brand name.

Just because something is popular does not mean it is safe from being legally protected.

This guide outlines the operational triggers that strip famous marks of their protection, and teaches you how to maintain market dominance whilst maintaining your intellectual property.

How Trademarks Lose Legal Protection

It seems like a massive marketing victory when a brand name becomes widely used in everyday language.

It is, however, a tremendous legal liability when consumers begin using your brand to identify the general product category.

As a result, as more and more consumers use your brand to identify the same type of product, the distinctiveness of your trademark diminishes, thereby giving the court authority to cancel your exclusive rights entirely.

Most founders have a fundamental misunderstanding of this risk, in assuming that when consumers widely begin to use the brand as if it were a generic product it is immediately destroyed and therefore cannot be protected.

When looking at brand names that became generic, the key danger, however, lies within your inability to implement any proactive actions to protect your brand from being diluted, discontinued or abandoned altogether.

If you do not take the initiative to inform your competitors, dictionary publishers and journalists that you do not want your mark to be used generically, the legal system will treat your mark as having been abandoned.

We must distinguish between marks that have actually died and marks that are merely under extreme pressure from market popularity.

How Trademarks Actually Lose Protection

A trademark is only intended to protect one specific thing: the manufacturer of the good.

Once that link has been severed, your legal right to protect your trademark also ends.

For example; if I walk into a department store and ask for a "thermos" without being concerned as to whether or not it is manufactured by King-Seely, then "thermos" no longer points to a single source, but rather to a specific type of product.

In this respect, courts rely upon actual evidence to determine when the product name has transitioned into a generic term.

Market researchers gather customer feedback through surveys and focus groups, monitor how brands are discussed in the media and on social media, scour dictionaries for new vocabulary associated with brands, and remember how brand owners market their products to determine how the public uses language to refer to products.

Often, the most damaging information about a brand's use of language comes directly from the brand itself.

When a brand promotes a product by using its trademark as a generic term in marketing materials, it provides competitors with the exact evidence needed to invalidate the brand's trademark registration.

Famous Brand Names That Became Generic

Many trademarks that have lost their legal rights to protection as a trademark have done so by crossing the line.

Several marks have had their rights stripped away by a court or patent office, at least within the United States.

1. Aspirin

Bayer was the first to trademark the name of its pain reliever (aspirin) in 1899 and was a dominant player in the market for many years.

However, Bayer did not prevent other companies from using the name aspirin to sell acetylsalicylic acid.

In 1921, a judge in the United States ruled that the term aspirin had become generic and, thus, anybody can sell aspirin in the United States. However, Bayer still holds the trademark in Canada and parts of Europe.

2. Cellophane

For many years, DuPont was the largest producer of transparent cellulose film (cellophane).

The problem for DuPont arose when they allowed cellophane to be used as a generic name to describe the product in the course of trade.

In 1936, a judge ruled that cellophane had become a generic name used by consumers to refer to any clear wrapping material, resulting in DuPont losing its exclusive rights to the term.

3. Escalator

Otis Elevator Company was the first to produce a stairway that moves (the escalator). They owned the trademark to the escalator and controlled the entire industry.

In 1950, Otis lost its trademark over escalators because it used escalator as a generic term in both its patents and marketing materials, providing the court with conclusive evidence to invalidate the trademark.

4. Thermos

King-Seely Thermos Co. vacuum-insulated containers were thought to be permanently monopolized by their inventors.

These manufacturers took to aggressive marketing within the public sphere who associated the name with the specific usage of insulating containers.

However, these manufacturers also failed to provide a common name for consumers to call their vacuum flasks—thus when a district judge ruled in 1963 that consumers had no alternate name for their product, the patent became public domain.

5. Pilates

Joseph Pilates created an extremely defined type of physical fitness system.

By the end of 2000, a federal judge found that gyms around the country were using the term Pilates to describe an entire movement system without regard to the proprietary aspect of it.

This resulted in cancellation of the trademark and allowed all gyms to conduct Pilates classes without paying significant fees associated with licensing the trademark.

6. Linoleum

Linoleum was created in the 1800s by Frederick Walton as a type of flooring material. It was one of the first examples of a branded name becoming a generic name.

The trademark descriptive name Linoleum was established as the standard description throughout the industry after battling through a court case in 1878.

7. Zipper

B.F. Goodrich utilized the catchy name Zipper for the fasteners on their rubber boots.

The name exploded throughout the apparel industry and is now the sole means of identification by the industry for the same hardware and is no longer associated with any distinct owner.

8. Dry Ice

The Dry Ice Corporation of America secured the trademark Dry Ice in 1925 for solid carbon dioxide products.

Their marketing campaign proved to be too successful as consumers stopped using the term "dry ice" to describe the substance and have now replaced the trademarked name with a generic term that expresses the chemical compound entirely.

Famous Brands That Are Still Protected

Even though many companies exist with products using the same techniques for marketing, through Google searches, how to market to consumers is completely open to everyone and does not constitute an infringement of the trademark.

While we often discuss brand names that became generic, the businesses listed below deal with significant press pressure from consumers but have been able to continue fighting to assert their rights with legal resources.

1. Xerox

The word "xerox" has become synonymous with copying on paper; it is used this way very frequently.

Although the name is used as a verb so frequently, Xerox has aggressively fought to protect the name.

If a company tries to sell a "xerox machine," they will be met with immediate and extreme legal consequences.

2. Google

The term "google" has become a commonly used way of saying "searching for something on the internet."

While the word is frequently used this way, Google has concerns because of the potential threat it poses to their intellectual property.

However, there are no competitive search engines who advertise themselves as a "google alternative," which keeps their brand unique.

3. Kleenex

Kimberly-Clark manufactures Kleenex facial tissues and works vigorously to maintain ownership of the brand name.

This word has become a generic term used by the public for a poorly defined type of tissue.

In response, Kimberly-Clark invests millions of dollars in marketing and legal action against companies that try to claim ownership of the brand name, reminding the public that only their product can be called "Kleenex."

4. Velcro

The Velcro Companies manufacture hook-and-loop fasteners under their brand name and invest millions of dollars in educating the public and media against equating other fastener products with their brand.

As a result, they maintain a strong legal position as a result of their extensive effort combating the misuse of their trade name.

5. Band-Aid

Johnson & Johnson has owned the Band-Aid name for adhesive bandages for many years.

Most casual buyers do not know that an adhesive bandage is the proper term, but all rival medical supply manufacturers are aware of the distinction between adhesive bandages and Band-Aids.

When trying to build their market presence in certain industries, it is common for competitors to use vague or generic words when referring to their products or services as a means of minimizing the potential for receiving substantial litigation from a competitor for trademark infringement.

6. Photoshop

As discussed above, the Adobe company has formally published an aggressive set of published brand protection policies in order to maintain control over the legal brand designation of its products and/or services.

For instance, Adobe provides a legal definition for the name "Photoshop" that states that the name is only to be used by professional commercial photographers and Adobe-approved users of the software.

When Adobe enforces the definition of the name Photoshop, it provides a legal and formal barrier for other companies who may be using the name Photoshop incorrectly.

7. Zoom

The sudden increase in demand for video conferences and online collaboration has created a surge in the number of people using Windows and Mac OS X as platforms for performing online meetings.

Because of this, the Zoom Video Communications Company has established a clear formal and legal indication that the term "Zoom" can only be used to identify a videoconferencing application.

No competitor may use the term to sell virtual meeting spaces.

How to Avoid Joining the List of Brand Names That Became Generic

Strategies for enhancing the security of trademarks are not limited to only protecting the company from potential trademark infringement filings against it; they also provide a clear roadmap for the company to establish and maintain its unique identity in the marketplace.

To maintain and sustain the brand name, all brand owners must develop and maintain a strict trademark enforcement program that defends against infringement of the brand name through trademark law.

Use the Product Name with a Generic Descriptive Name

All mark owners must ensure that the product mark does not stand alone within a sentence. It should appear as an adjective, not as a noun.

For example, say "a Kleenex tissue" rather than "a Kleenex."

By providing both the generic category word and the specific product mark, it prevents the possibility of a journalist or consumer substituting the generic category name in place of the registered trademark designation.

This small but significant formatting change provides the courts with the specific evidence they will use when reviewing the evidence presented during a trademark cancellation trial.

Monitor Competitors and Take Action Against Commercial Misuse

While you have no control over what your competitor says within their residence, you do have full control over what your competitors write about your product(s) in print.

Monitoring therefore provides you with a clear path to establishing and maintaining control over the use of your trademark name.

Tracking how competitors, publications, and dictionary publishers are using your trademark provides you with valuable insight into your competitors' plans and activities, and assists you in protecting the validity and exclusivity of your trademark in the marketplace.

If a trade publication uses your trademark inappropriately and incorrectly, immediately send a written letter of correction.

Documenting these ongoing enforcement efforts demonstrates to a judge that the trademark owner is actively defending against any unauthorized use of their registered mark.

Do Not Allow Internal Use of Verb and Plural Forms

Your marketing department is your greatest threat.

When your internal employees improperly reference your brand name, they can be a major detriment to your brand, eliminating or significantly discounting your legal right to protect your trademark.

Prevent the use of plural forms and prevent the use of the trademark as a verb.

Any consideration given to how the trademark appears on your website should be made in accordance with how the Trademark Office views the trademark.

If a judge sees your website treating the trademark casually, or using the trademark as a common noun, the judge may rule that the trademark owner has allowed the trademark to become generic.

Final Thoughts: Protect Your Brand Identity Before You Expand

Earning a dominating position in a popular marketplace is both good and bad.

On one hand, developing a well-recognized brand will add tremendous value to your business; however, if you do not aggressively protect your brand against mislabeling in the marketplace, it could easily lead to the demise of your business.

The line between successful marketing of a product trademark and the legal genericide is almost razor thin.

Companies that successfully navigate through this environment create an operational workflow for trademark protection; they do not just assign this responsibility to a third-party attorney.

Additionally, they proactively develop and implement a solution that protects their trademark so that they do not allow their competitors to educate the market on how they should categorize their products, and when their competitors misuse their trademark, they are very quick to address the misuse and pursue aggressive enforcement efforts.

If you do not secure your category language early in your business life cycle, it is likely that the court will award your trademark directly to one of your competitors.