From escalators to dry ice, how to avoid “genericide” in your brand

Jamie-Lynn Kraft explains trademark law and rules with the ease only a skilled intellectual property (IP) lawyer can, with the kind of poise and polish you acquire after doing it a long time.

That’s because Kraft,  like the rest of the team at Canada’s largest IP law firm Smart & Biggar, wants to help her clients succeed while avoiding issues with Canada’s IP office, or the unnecessary drama of a costly IP lawsuit.

So if you attended her latest trademark masterclass with Invest Ottawa, your ears may have perked up when she uttered a dramatic, powerful, and anxiety-inducing word: genericide. 

“Genericide is when a brand’s value goes down to zero,” said Kraft. 

Victims of genericide include products like dry ice and linoleum, which had trademarks that became known as the generic name for a product or service. Usually this happens when  a company  chooses a poor brand name, or fails to monitor and maintain their trademarks. 

Two critical steps can help protect your valuable trademarks from such folly, but each needs to be done right. First, choose a powerful trademark. Second, protect and maintain it. The protection and maintenance step is the one we’re focusing on here. 

Kraft’s knowledge on trademarks goes far beyond what we can cover in a short article, but you can get started with these tips to avoid genericide and other trademark problems.

Register your mark at the right time

Knowing when to register a trademark is just as important as knowing what to register.

In countries like Canada and the U.S., it may not be necessary to register a trademark right away. Common law protections in those countries can give you some wiggle room to consult with a lawyer about your strategy while developing your trademark rights.

“The earlier you can file your application, the better,” said Kraft. “But it doesn’t mean you’re sitting there with no rights and leaving your trademark vulnerable to theft.”

When you register your trademark with the help of a seasoned IP lawyer like Kraft you’ll get:

1. Protection across the country
2. Greater chance of success in a lawsuit
3. Passive enforcement – staking a claim signals to others the trademark is taken
4. Defence against an infringement claim
5. Availability almost everywhere in the world

File your trademark strategically

When it comes to filing a trademark application, Kraft relies on two strategic tenets. 

First, file with the future in mind. “You don’t want to limit yourself to what you’re doing right now – what’s the one-year horizon, what’s the five-year horizon?” she said. ”If you’re selling soaps, you may eventually expand into shampoo, perfume and maybe even clothing.”

Second, let your sales drive your filing strategy. “Wait until your sales are high enough to justify filing in foreign markets, particularly if you can rely on common law protection in the meantime,” said Kraft.

Here are the top considerations for  filing strategically:

1. You’ll give yourself the time you need to do a cost-benefit analysis, so you can rank your trademarks and potential markets in order of importance and risk. For example, China is a high-risk market due to the proliferation of trademark trolls (profiteers who register trademarks with no intention of using them) and the fact that it is a first-to-file jurisdiction. You may want to prioritize filing there if you plan to expand sales there in the future
2. When Canadian companies file in Canada, they have six months to file applications in other countries while maintaining that earlier Canadian filing date. Meaning you can see if your sales go up in that jurisdiction before investing a lot of money there unnecessarily. 
3. When you file in Canada first, you can optionally file an international application with the  World Intellectual Property Office (WIPO) and select the foreign countries where you want protection in a single application (which is convenient, but still expensive). The more countries you’ll be doing business in, the more using the international system makes sense.

Use it (or lose it)

Using your trademark effectively is the most important step in preventing an unfortunate genericide incident. 

In Canada your trademark registration can be canceled after three consecutive years if the trademark isn’t used. And it’s not enough to use your trademark, you have to use it as a trademark. 

“The hardest part about trademark rights is the monitoring and maintenance process,” said Kraft. “It’s not enough that you get a registration. It’s not enough to use a trademark. Keeping those rights and managing them takes work.” 

That’s exactly the kind of work trademark lawyers at Smart & Biggar do so you don’t have to; they can monitor the market and new trademark filings to look out for anything that could infringe on your brand and trademarks.