trademarkAccording to BrandFinance’s annual report on the world’s most valuable brands, the GOOGLE trademark is the most valuable brand in the world; worth over $100,000 million. So how is it that the world’s most valuable brand is the subject of a claim that it has become generic and is no longer protectable?

When a trademark owner develops a product category that is new to the marketplace, its success in branding can sometimes be its demise if the brand loses its significance as a trademark and becomes the generic name for the product itself. Think aspirin, escalator, laundromat, and kerosene.

While all of us should be so lucky to develop a brand that becomes so well-known it becomes vulnerable to a trip to the trademark graveyard, this case is a good reminder to all brand owners to have processes in place to avoid such a finding.

The first and most important step to ensuring proper trademark use starts within your own company. While every rule has its exception, it is recommended that you educate your marketing team and employees to:

  • use the trademark consistently;
  • distinguish the mark from surrounding text (i.e., capitalizing the mark or the first letter of the mark, using a distinctive typeface, enlarging or italicizing the mark);
  • if registered, include the registration symbol ®; and
  • avoid using the trademark as a noun or verb — it should be used consistently as an adjective modifying a noun (e.g., GOOGLE® search engine).

While education is important, someone in the company should also be periodically reviewing all marketing materials and the company’s website and social media platforms to ensure compliance.

The second step, however, is more challenging since it addresses how consumers, customers, distributors, retailers, the media and the like (i.e., those outside your control) use your mark in the marketplace. In such cases of misuse, you will need to consider how to best educate and encourage such groups to use your marks properly.  Google includes a “Rules for proper usage” page on its website (found here) to help educate its users. When the frequency of misuses increases, companies often use email, advertisement or social media campaigns to get the point across, such as:

Sometimes, however, the misuse is egregious and may require a heavier hand, such as an aggressive letter from your outside counsel.

While Google has dodged the bullet so far (its latest victory was at the federal appeals court level), stay tuned to see whether the Supreme Court takes up the case. For additional information on trademark issues, please contact Caroline Chicoine or Alan Nemes.