How Well-Known Companies Lost Their Trademark Rights

A trademark (™) is a VIP ticket for your brand, which confers exclusivity, recognition, and legal protection. But when businesses don't defend their trademarks or allow them to become generic, they lose them. Some of the world's most recognizable brands learned the hard way as their trademark (™) and registered trademark (®) rights disappeared through genericide, abandonment, and litigation.

What's genericide?

Genericide happens when a brand name is so overused that it's employed as a generic term for the whole product category - like calling all tissues "Kleenex" or all painkillers "Aspirin." If a business doesn't get consumers to recognize its name indicates a brand, and not the product, then courts will hold that the trademark no longer applies. That's a multi-million-dollar advertising nightmare.

Famous brands that lost their trademarks

Even the largest brands aren’t safe from losing their trademarks (™/®). From household items to common names, these brands learned the hard way that neglecting to protect a trademark can turn it into public property.

Escalator (Originally: Otis elevator company's trademark)

The Otis Elevator Company first owned the exclusive trademark rights to the term "Escalator," which it invented for its moving staircases. However, as time passed, the public, competitors, and media adopted the term "escalator" to describe all moving staircases, irrespective of the manufacturer. This widespread use led to a legal battle in 1950, resulting in the case Haughton Elevator Co. v. Seeberger. The US Court of Customs and Patent Appeals finally held that "Escalator" was a generic term, which deprived Otis of its trademark protection.

Loss of the Escalator trademark was a cautionary tale on the perils of trademark genericide. Otis didn't act in time to stop public misuse, enforce its trademark rights, and educate the public about proper use of its brand name. In contrast, companies like Xerox and Velcro learned from Otis’ mistake and actively launched campaigns to protect their trademarks from becoming generic.

This is a reflection of the value of aggressive trademark policing to secure exclusivity. By the time a brand name becomes generic, legal action can't resurrect its prior status. The Escalator case serves as an all-time classic in highlighting how industry titans are subject to forfeit their greatest intellectual assets, had they not ensured proactive safeguarding.

Aspirin (Originally: Bayer's trademark)

It was in 1899 that the German pharmaceutical company Bayer introduced Aspirin as the commercial name for its acetylsalicylic acid. The name had been deliberately derived by using the first letter "A" of acetyl and the prefix "spir" of Spiraea ulmaria, a plant whose leaves naturally contain salicylic acid, combined with the ubiquitous pharmaceutical suffix "-in." For decades, Aspirin remained a trademark, solely meaning Bayer's product.

But World War I transformed the destiny of Bayer's trademark dramatically. When the United States entered the war in 1917, the United States government, under the Trading with the Enemy Act, seized Bayer's properties, including the Aspirin trademark. The properties were eventually sold at auction, with Sterling Products buying the Bayer name and trademarks in the US. But as there were now multiple producers of the same medication, marketing it as "Aspirin," the brand name became generic very soon.

In 1921, an American court held by law that "Aspirin" was a generic name, and Bayer no longer had sole right over it in the US. This decision allowed competitors to market their acetylsalicylic acid products under the brand aspirin, largely undermining Bayer's dominance over America's drug industry.

Thermos (Originally: Thermos LLC's trademark)

In the early 20th century, Thermos Company changed the way people preserved drinks hot or cold by introducing their vacuum-insulated flasks, cleverly called "Thermos" bottles. The company soon became a byword for portable temperature retention, earning "Thermos" a name on every household's lips.

But the very success of the brand contributed to its loss in trademark protection. Consumers began using "thermos" to describe any vacuum-insulated flask, regardless of the manufacturer. This generic application of the brand name eroded its distinctiveness. The turning point had come in the 1963 case King-Seeley Thermos Co. v. Aladdin Industries, Inc., where the court ruled that "thermos" was a generic word. Consequently, the Thermos Company lost the distinctive right to the trademark in the United States.

Yo-Yo (Originally: The Flores Yo-Yo Company Trademark)

The name was originally trademarked in 1930 by Pedro Flores, a Filipino inventor and immigrant who created the Flores Yo-Yo Company in 1928. Flores played a key role in popularizing the yo-yo in the United States through mass manufacturing and demonstrations. In 1932, Donald F. Duncan Sr. purchased the rights to the trademark and the Flores Yo-Yo Company, which enabled Duncan to monopolize the expanding yo-yo industry in the United States.

While Duncan owned the yo-yo, it was made a national sensation, thanks to aggressive marketing campaigns, national competitions, and widespread advertising. When the toy became popular worldwide, others began selling similar spinning toys as "yo-yo." Soon enough, consumers and retailers began applying "yo-yo" in a generic way to describe any such toy regardless of who manufactured it.

This general public use created a legal controversy in the 1960s, which led to the case Donald F. Duncan, Inc. v. Royal Tops Mfg. Co. (1965). The court ruled that "yo-yo" was a generic term and Duncan could no longer have exclusive trademark rights.

Loss of the Yo-Yo trademark is a classic example of how a brand name loses its exclusivity unless it's properly defended. Duncan failed to pursue its trademark aggressively, and consequently, the public and its competitors contributed to its loss of exclusivity. Companies like Jacuzzi and Band-Aid took a lesson from this failure and actively sought legal recourse to protect their trademarks.

Other reasons why companies lost their trademarks

Although genericide is the most well-known means of brands losing trademarks, there are other traps:

Abandonment: Sony's Betamax (RIP, 1980s tech)

Sony introduced the Betamax video cassette recorder (VCR) during the mid-1970s, an innovation that made it possible to capture TV broadcasts to watch at a later date. Despite superior technology, Betamax was bombarded with competitive forces from the VHS format, which had longer recording times and ultimately gained a bigger market share. As the demand switched from consumers to VHS, Sony slowly phased out its bet on Betamax, ending production of Betamax recorders in 2002 and the sales of Betamax cassettes in 2016.

Maintenance of an active use of a trademark is essential to its protection. When a business ceases to use a trademark in commerce, it will be abandoned and forfeits the exclusive rights. Continuous and regular use is necessary to maintain legal protections and avoid competitors from copying.

Trademark wars: Apple vs. The Beatles' Apple Corps

Apple Inc., the technology firm behind the iPhone, had been locked in a decades-long court fight with Apple Corps, the record company founded by The Beatles, over the right to use the "Apple" name. The conflict began in 1978, when Apple Corps sued Apple Inc. (then Apple Computer) for trademark infringement.

The companies settled in 1981, with Apple Inc. agreeing to stay out of the music industry and paying Apple Corps $80,000. But tensions again flared when Apple Inc. launched music-related products such as iTunes and the iPod, which gave rise to further lawsuits.

The disagreement spiraled into a 2006 UK trial, in which Apple Corps accused Apple Inc. of violating their deal by venturing into the music industry. The court held that Apple Inc.'s use of the Apple logo on iTunes didn’t violate the rights of Apple Corps. The corporations only resolved their issue in 2007 with Apple Inc. acquiring full ownership of the Apple trademarks and licensing certain rights back to Apple Corps. The highly publicized case highlighted the way a trademark dispute may remain ongoing for decades and burn tens of millions in attorney and settlement fees.

5 ways to avoid the loss of trademarks

If you own a trademark, follow these steps to ensure its protection:

1. Consider how you use your trademark

Don’t allow your trademark to become an overused term. If a brand name ultimately replaces the real product category in common usage, it can become generic (e.g., "escalator" or "yo-yo"). For instance, rather than say, "Xerox this," say, "Make a Xerox copy." Maintaining a keen brand identity in advertising and product identification aids trademark protection.

2. Educate the public

The customer is the one who has to make sure a trademark is upheld. Google and Velcro had to remind the public that the names aren't used to indicate any product but a specific brand. Google even clarifies in its terms of use that "Google" is a trademark, not a verb. Ongoing advertising campaigns, disclaimers, and usage instructions keep your brand from being generic.

3. Enforce it legally

If other people start misusing your trademark - either your competitors or the general public - you have to act quickly. Send cease-and-desist letters to infringing users, challenge misuse in the media, and sue if necessary. If you let widespread misuse pass without response, it waters down your right to exclusivity, and sooner or later courts will rule that your trademark is no longer enforceable.

4. Continue to use it

Abandonment of a trademark is the easiest way of losing protection. If a mark fails to utilize its trademark over a long period without any motive to revive it, it may be considered to be abandoned. Even occasional, periodic use sustains trademark rights.

5. Watch trademark applications

Competitors and new businesses can file for similar trademarks, either accidentally or intentionally. By monitoring new trademark filings, you can battle opposing applications before they become legally protected. Most businesses regularly search trademark registries and hire legal experts to keep their brand name secure.

Trademarks are like relationships - they require effort!

A trademark (™/®) isn't just a legal shield - it's a brand identity, and losing it can cost money. Some of the largest brands in the world lost their trademarks through genericide, abandonment, or court wars. A brand name can end up as public property if firms don't uphold proper use, inform consumers, or protect their rights.

Preventing loss of trademark involves ongoing monitoring, legal action, and professional advice. Businesses need to prevent misuse, keep their marks in use, and prevent conflicting filings. Those who invest in trademark searches, enforcement, and monitoring - such as those offered by Trademarkia's seasoned attorneys - have the best opportunity to keep their brand names safe.

Additional resources

Glossary of legal terms

Trademark (™): A symbol, word, or phrase legally established by use as representing a company or product.
Registered trademark (®): A trademark that has been officially registered with a governing trademark office, granting exclusive legal rights.
Abandonment: When a trademark owner stops using the trademark without intent to resume, leading to its loss.
Cease-and-desist letter: A formal notice sent to an individual or company demanding that they stop unauthorized use of a trademark.
USPTO (United States Patent and Trademark Office): The federal agency responsible for granting and maintaining trademarks in the US.
Trademark monitoring: The process of watching for unauthorized use of a trademark or potential infringement to prevent loss of rights.
Trademark enforcement: Legal actions taken to protect a trademark, such as lawsuits or sending cease-and-desist letters.
Trademark filing: The process of submitting an application to officially register a trademark with the USPTO or another trademark office.
Trademark search: A comprehensive check to ensure that a desired trademark is not already in use or registered by another entity.