They’re not always protectable, however, if you fail to police use of your mark by others. In fact, trademarks can lose their strength over time and may even become generic.
The words “ESCALATOR,” “ZIPPER,” and “YO-YO.” These were all once inherently strong trademarks. Because the owners failed to police the marks or may have even misused the marks themselves, the marks lost their source indicating power and became generic in the United States.
See, once non-ESCALATOR brand moving staircases became known as “escalators,” instead of “moving staircases,” the “ESCALATOR” brand no longer had trademark meaning. It became the common everyday name of the goods themselves.
It’s important that you select a strong mark and continue to police it. That’s why trademark owners continue to remind you, for example, that you are photocopying a document, not Xeroxing it. And you are not grabbing a KLEENEX, but a KLEENEX brand tissue. And GOOGLE reminds you that you can only “GOOGLE” on the GOOGLE brand search engine. Make sense?
One instance of a failure to police a trademark occured with Singer sewing machines. Singer registered its trademark inthe 1800s, but by the 1890s the term “Singer” had become a generic term for sewing machines. In other words, it was possible for Ford to make Ford-brand singers. However, by the 1950s, the word “singer” had lost its generic meaning and the Singer company got its trademark and federal registration back. Don’t count on that happening for you, however. It’s easier to police your trademark than to try to recapture it after it becomes generic.
So, those are the two big considerations when choosing a mark. Choose a protectable mark—one that is suggestive or arbitrary or fanciful—and be sure to conduct a clearance search to avoid filing a mark that is likely to cause confusion with a previously used or registered mark.
And, there are other factors to consider, though. Some of these may also prevent your mark from registering. Some of the situations to be aware of include where the mark is a surname, where it is geographically descriptive, deceptive, disparaging or offensive, a misspelling of descriptive or generic wording, or an individual’s name or likeness that is being registered without that person’s consent, a title of a single book or a movie, and matter that is purely decorative or ornamental. There are a lot of things to think about.
For example, if your mark includes a foreign word or phrase, how will it translate into English? Will it translate into a generic word. “VINO” for “WINE?” Or is the English translation likely to cause confusion with a registered mark? Like, “LUPO” for “WOLF?” Those are all things you want to keep in mind. Remember, you’re not “buying” a trademark registration. You’re applying for one. That means, if the trademark office refuses your application, your mark will not proceed to registration and, in addition, you will not receive a refund of your filing fee. The filing fee covers the trademark office’s processing costs; it is not a guarantee of registration.
In short, it’s important to choose a strong trademark, but it’s equally important to police your trademark after you’ve chosen it. Trademark my business in US