Congratulations on successfully trademarking your product or brand! Now it’s crucial to protect that investment through diligent trademark oversight and enforcement. This involves actively monitoring for, and taking appropriate legal action to stop or correct, any unauthorized or incorrect use of your brand. By safeguarding your brand against infringement, you maintain consumer trust in the authenticity of your products and services, ultimately preserving your hard-earned brand reputation and market value. By monitoring use in all segments, you maintain the valuable intellectual property rights the trademark represents.
Why? Consider the example of “Broccolini®,” or so-called baby broccoli, a once-niche vegetable now found widely at supermarkets and restaurants. Developed in 1993 by Sakata Seed Company in Japan, this hybrid vegetable, created by crossing broccoli and Chinese broccoli (gai lan), combines the flavors and features of both parent vegetables. While widely known as Broccolini®, this name is a registered trademark owned by Mann Packing Co., one of the world’s largest produce distributors. In fact, this unique vegetable is also trademarked by other business entities under various names, including “Asparation®” and “Tenderstem®.” However, until recently, Mann did not seem to have actively monitored or enforced its proprietary rights to the “Broccolini®” tradename, raising the question: why now, and is now too late?
While widespread use of the tradename Broccolini® may appear to be a marketing triumph for Mann Packing Co., it also presents a significant challenge. The success of the brand risks inviting others to capitalize on this recognition without investing in the same marketing and branding efforts as Mann Packing Co. This third-party use could dilute Mann’s brand equity and erode their market share by allowing such competitors to “free ride” on Mann’s hard work and investment.
As a brand thrives, the astute brand owner must consider not only what sustains demand but also whether consumers primarily associate the product with the brand itself. Returning to the example of Broccolini®, this can be a double-edged sword. While Broccolini® sales are at an all-time high, has the term become so synonymous with the vegetable that Mann risks losing trademark protection to genericide? That is, does the purchasing public think all “baby broccoli” are Broccolini® or that “broccolini” is the apt name, similar to Thompson Seedless green table grapes?
Genericide occurs when a trademarked term becomes so synonymous with a product category (i.e., becomes “generic”) that it loses its distinctiveness and ultimately its trademark protection. This happens when the term is widely used to refer to the general type of product rather than a specific brand. Notable examples include “aspirin,” “escalator,” and “thermos,” once brand names that are now generic terms due to widespread use and inadequate enforcement by their owners. Genericide poses a substantial risk to brand owners as it erodes the exclusive rights and legal protections conferred by trademarks, ultimately diminishing brand value and market power.
To prevent trademarks from becoming generic, brands must undertake a multifaceted strategy combining legal, marketing, and educational efforts. Legally, companies should diligently enforce their trademark rights by monitoring and taking action against unauthorized use, including issuing cease-and-desist letters. Marketing strategies should emphasize the proper use of the trademark, ensuring it is always used as an adjective followed by the generic name of the product (e.g., “Broccolini® baby broccoli” rather than just “Broccolini”). Brands should also include trademark symbols (™ or ®) in their marketing materials to reinforce the trademark’s status. Additionally, companies should educate the public about the importance of proper trademark usage through public awareness campaigns. This education can extend to influencing dictionaries and media outlets to ensure that trademarks are not listed as common nouns. Furthermore, brands can engage in proactive branding to reinforce the trademark’s association with a specific source rather than a generic category.
All is not lost for a brand that has failed to enforce its trademark and risks becoming generic. However, rescuing a trademark from genericism is extremely challenging. Some steps a brand might take to attempt to reclaim its trademark include:
- Re-Educating the Public: launching marketing campaigns to educate the public and emphasize that the term is a brand name rather than a generic product name.
- Enforcement of Trademark Rights: enforcing trademark rights by sending letters to competitors and others who use the term without authorization or incorrectly.
- Rebranding: consider a partial or full rebranding to distinguish the product from the generic products.
- Legal Action: take legal action to reassert its trademark rights, and to demonstrate that the term has maintained its distinctiveness and is recognized by the public as a brand name.
- Evidence of Secondary Meaning: gathering evidence that the term has recognition and significance in the minds of consumers as identifying the source of a product or service, e.g., Apple® and American Airlines®.
Indeed, Mann Packing Co. seems to be pursuing this very course. As recently as February 2024, Mann applied for the trademark “Real Mann’s Broccolini,” and has started posting educational campaigns to educate the public of Broccolini’s® proprietary meaning.
While the success of Mann’s campaign has yet to be seen, Broccolini® and other brands alike should proceed cautiously, especially when choosing to enforce their trademark rights after a significant period of inaction. For example, laches is a defense used to bar a trademark infringement claim when the trademark owner has unreasonably delayed taking action against an alleged infringing party. Such delay can undermine the trademark owner’s ability to enforce their trademark rights if the alleged infringer has invested in and built their business under the assumption that their use of the mark was unchallenged. Alternatively, a third party can petition the U.S. Patent and Trademark Office to cancel a trademark on the grounds that it has become generic by filing a petition for cancellation, providing evidence that the mark is now commonly used to refer to the general category of goods or services rather than the specific brand.
