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Successful trade-marks are not just well known, they're also "distinctive"

The success of a trade-mark cannot solely be measured by its fame.


In fact, if a trade-mark becomes so famous that consumers begin to confuse it with the name of a product, that trade-mark may be worthless.

A successful trade-mark is distinctive and is associated with a particular source of a product or service in the minds of consumers. In order to maintain one’s trade-mark rights, it is important to, among other things, ensure that the trade-mark remains distinctive.

On the one hand, this means that competitors must not be allowed to use the trade-mark without authorization and thereby confuse consumers as to the source of goods or services. The other point is less intuitive. In order to maintain the distinctiveness of a trade-mark (e.g. brand), the owner must ensure that consumers do not conflate the name of the brand with the name of the product.

It would seem to be every marketing department’s dream that its brand should become so well known that it becomes synonymous with the name of the product. One would think this to be the ultimate sign of success because it seems to indicate that consumers know of no other trade-marks associated with that product. Unfortunately, such a situation usually signals the demise of what could have otherwise been a very successful trade-mark.

Once the trade-mark is understood by consumers to describe the actual product (as opposed to a particular brand of the product), the trade-mark becomes descriptive of the product and is therefore no longer distinctive. In other words, the trade-mark is no longer viewed as signaling a particular source of the product, but rather is viewed as the name of the product itself, regardless of who produces it. Accordingly, as a matter of public policy, it is no longer fair for any one person or company to monopolize such a word and so the owner loses its rights to the trade-mark.

This is what happened many years ago to Thermos in the U.S.

Thermos was (and in some countries still is) a trade-mark that was applied to vacuum flasks. A competitor successfully argued in a U.S. court that the word “thermos” had become descriptive of the product and was therefore no longer a valid trade-mark in that country.

Part of the lesson here is that a company should be careful to avoid conflating its brand with the product name on packaging or marketing materials and should identify all trade-marks by appropriate markings (e.g. TM or ®).

Alexander Anishchenko, B.A.Sc. (Elec. Eng.), MBA, J.D., is an associate lawyer with Bereskin & Parr LLP. He can be reached in Toronto at 416.364.7311 or aanishchenko@bereskinparr.com.