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A Branding Paradox: Build But Don’t Dominate

Marketers are encouraged to maximize the awareness, trial and usage of their brands.  They also know that a brand is more than just a fanciful name.  Insightful research and prudent positioning will make a brand “special” in the eyes (and hearts) of their target customers, offering a meaningful promise, a credible reason to believe this promise and a competitive edge.  The name is the face of this brand positioning.  Ideally, it should be memorable and generate associations that can help create a special relationship with the customer.  And the name should be trademarked.    

A trademark is a word, name, symbol or device that identifies a particular company’s product or services.  However, when a brand is so successful, it runs the risk of becoming synonymous with the category, especially if the name is a made-up word. This is called the “genericization” of the trademark, which is bad because it threatens a company’s legal right to that trademark.  The standard for “genericide” (another term used by lawyers) was established at the seminal case of Bayer Co. vs. United Drug Co. in 1921, where Bayer lost its trademark for Aspirin. This set the precedent that if a brand name is understood by the public to refer broadly to a category of goods and services rather than that brand’s specific good or service, the company risks losing its trademark. Here are some examples of well-known brands that have lost their trademark protection since 1921 and now merely refer to classes of products we see every day:

  • Kleenex – from Kimberly-Clark, instead of tissue
  • Escalator – a trademark of the Otis Elevator Company
  • Zipper originally owned by B.F. Goodrich
  • Dumpster
  • Linoleum
  • Trampoline
  • Laundromat

Basically, when a trademark becomes so pervasive that it no longer just represents the brand, it often is used as the action or a verb. It then becomes too descriptive or generic in nature to protect. With this in mind, there are successful brands that are in jeopardy of losing their trademark and hence diligently fighting to protect it:

  • Band-Aid – from J&J, which is the immediate choice to cover a cut or scrape
  • Xerox – often used as a verb (go “Xerox” this…), so encouraging people to use it as a noun (use a “Xerox” copier”)
  • Legos – avoiding using a plural version, so instead favoring “Lego bricks” over Legos.
  • Hoover – hoovering or to hoover up a carpet, dating back to the 1940’s
  • Frisbee – a flying disc still protected by Wham-O
  • Velcro – still trademarked by the parent company, Velcro.

Perhaps the biggest challenge of a recognizable brand is Google. The name “Google” was officially recognized as a verb by the Oxford English Dictionary in June 2006.  In the same year, the Merriam-Webster online dictionary recognized a broad definition of “googled or googling for the use of a Google search engine to obtain information on the World Wide Web”, based on three criteria: widespread usage, sustained use and meaningful use.  However, Google took a more affirmative stance on protecting its trademark from “genericization” in 2013 when it took legal steps to stop Sweden’s Language Council from adding “ungoogleable” to its list of new words (i.e. meaning something that can’t be found on the web using a search engine – any search engine).

In addition to Merriam-Webser and Oxford recognizing google to describe any online search, other sources have since joined in with this recognition – Macmillan, Cambridge, and Wikipedia.  Notwithstanding this widespread acceptance, Google continues to encourage the use of “google” as a verb that pertains only to online searches on Google to protect its trademark status.

Another emerging challenge involves what to call marijuana these days.  This is a $10 billion market today, with 11 states and the District of Columbia having legalized it.  “Marijuana” was first introduced into the English language in 1874, which was derived from Spanish, as the Spaniards brought cannabis to Mexico to cultivate for industrial hemp. In the Jazz age of the 1920’s – 30’s, it was called dope, reefer and tea, and 30 years later in the 1960’s, the counter (or “Stoner”) culture called it grass, pot and weed.  While there may be a generational divide on what to call it, today’s marketers prefer the centuries-old terminology of “cannabis” which had long been used to describe the plant and its medical properties.

The risks of “genericization” of a trademark may seem a farfetched outcome for a new product, but it is a dilemma for marketers of well-established brand names – a real paradox for those who strive to dominate a category. 

Jay Gronlund

Jay Gronlund is an experienced business development and branding professional with a successful track record introducing new products and services, expanding into foreign markets, re-positioning products, and facilitating ideation sessions. Jay has effectively applied proven marketing and branding principles from his background in the consumer goods industry to other industry sectors, including B2B situations. Jay’s career began in consumer packaged goods and then expanded into household products, beverages and publishing. His first company was Richardson-Vicks (now part of Proctor & Gamble), where he held new product positions in New York and in London. He continued his new product responsibilities for Arm & Hammer products at Church & Dwight (Arm & Hammer), then VP Marketing of the wine/champagne division of Seagram, and finally VP, Director of Marketing at Newsweek. Gronlund started The Pathfinder Group in New York in 1990, an international business development and brand consulting firm. Related to this, much of his work today involves re-positioning brands, ideation sessions and marketing workshops, with a primary focus on emotional branding, especially building brand trust for clients. Jay has also been teaching a marketing course at NYU since 1999, “Positioning and Brand Development". Jay recently wrote a new book, “Basics of Branding," reflecting his NYU branding course and professional experience. He has also published several articles on diverse marketing topics: “5 Steps to a Successful Ideation Session," “What B2B Marketers can Learn from B2C," “Employer Branding," “Customized Marketing for Tomorrow’s Leaders," “Sharing and Implementing New Ideas Across Borders," and “Working with the New Russians”, “Word-of-Mouth Marketing for B2B Situations," “The Future of m-Health” and “How to Build ‘Value’ for Healthcare Brands in Emerging Markets." Jay Gronlund is a graduate of Colby College and has an MBA from Tuck at Dartmouth College.

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