Is It Too Late For Velcro to Hook the Public on Hook and Loop?

In an effort to protect itself against genericide—the death of a trademark because the brand name becomes synonymous with the type of product—Velcro’s legal department released a video two weeks ago pleading with the public to stop saying “Velcro” and start saying “hook and loop” or “self-adhesive straps.”  (Watch it, really.)  Amazingly, Velcro’s play on the ballad “We are the World” has already gone viral.  Though the comments on the video are mixed, Velcro’s video is certainly raising awareness of its brand. 

Velcro is trying to avoid losing its trademark, as did linoleum, aspirin, thermos, dumpster, escalator, realtor, and (more recently) pilates.  The purpose of a trademark is to help the public identify the source of a product.  When a trademark becomes synonymous with a class of goods, it no longer helps the public understand which company made the product.  In that case, the trademark is subject to cancellation at the U.S. Patent and Trademark Office, and cannot be used to prevent others from using the mark to describe their products.

Velcro’s song is relevant to one factor the courts consider when asking whether a trademark has become generic: Has the trademark owner attempted to educate the public on the proper use of the mark and the generic name for the goods?  Ad campaigns like Velcro’s have successfully stopped marks like Xerox, Jeep, and Band-Aid from becoming generic.  Johnson & Johnson, for example, changed its marketing jingle from “I am stuck on Band-Aids, ’cause Band-Aid’s stuck on me” to “I am stuck on Band-Aids brand  ’cause Band-Aid’s stuck on me.”  Chrysler started using the term “SUV” instead of “Jeep” to describe a new class of cars.

There are less costly ways of protecting a trademark from genericide, including using the labels ® or TM as appropriate and creating and enforcing guidelines on how to use the mark.  Of course, creating a viral video or marketing scheme is a lot more fun than playing word police.