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Crayola Sees Red Over Crayons: Preventing a Trade Mark from Becoming Generic

Posted on Nov 10, 2014 by Dr. Julie Nixon  | Tags: trademark, intellectual property  | 0 Comments

Last week saw Crayola, the famous crayon company, file a suit in the US against Alex Toys LLC. Crayola claim that the defendant’s unauthorized use of the famous Crayola trade mark is wilful trade mark counterfeiting. But Crayola also filed the suit to prevent “genericide” of their trade mark.

Brand Suicide

A trade make is often the most valuable asset of a company.  The exclusivity of the trade mark is what sets it apart from competitors. Losing this exclusivity means the brand is finished. A trade mark can become generic if consumers come to understand the trade mark to be the name of the goods themselves, as opposed to identifying the origin of the goods. If this happens, competitors of the trade mark may have the right to use the mark on their goods. This is what Crayola are trying to prevent. Suing Alex Toys LLC demonstrates they are not being complacent about use of their trade mark. So while establishing a trade mark that is a house hold name is something marketing departments dream of, it can also result in a trade mark losing its distinctiveness if proper precautions are not taken.

Indeed, Google is so aware of the problem that it has published "rules for proper usage" of all its trade marks, partly to help stem the use of "google" as a verb. Twitter has also raised concerns about brand genericide in its initial public offering (IPO) in October 2013. Its IPO filing reads: "There is a risk that the word 'Tweet' could become so commonly used that it becomes synonymous with any short comment posted publicly on the internet, and if this happens, we could lose protection of this trademark."

Avoiding Your Trade Mark Becoming Generic

To prevent consumers from coming to associate the trade mark with the name of the product itself, owners should take care how they use the trade mark in advertising and in the media. After battling it out in the courts for more than two years, Apple dropped its lawsuit against Amazon over the e-commerce giant's use of the term "app store". Both Amazon and Microsoft argued that "app store" was a generic term in common use, with Microsoft referring to Apple co-founder Steve Jobs’ public use of the term in a generic way as evidence. In a conference call with analysts Jobs was quoted as saying, “Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android.”

Where possible a trade mark owner should assert their trade mark rights by placing the appropriate symbol beside the trade mark. The appropriate symbol is ™ where the trade mark is not registered and ® where registration has been obtained (some companies chose to just put ™ on all brands to avoid confusion). Also it is best to accompany the trade mark with a product description, such as “Levi’s jeans”. The trade mark should be used as an adjective, not a noun.

Crayola in Danger?

Reading the complaint against Alex Toys, it is interesting to note that the defendant has recently hired Crayola’s former General Manager of Sales, Darren Silverman as its “Executive Vice President of Sales” in what looks like an effort to improve the marketing of its products. The defendant has apparently boasted publically about its recent hiring. The new marketing strategy could backfire here however if Crayola is successful in its case. If it isn’t, then Crayola may end up joining other trade marks such as Escalator and Thermos who were victims of their own success.

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