Will Velcro’s Unique Trademark Protection Strategy Stick?

Will Velcro’s Unique Trademark Protection Strategy Stick?

Velcro Companies recently took a unique step to ensure that it does not fall victim to its own success. It launched an online campaign designed to deter the public from misusing its VELCRO™ trademark.

Falling Victim to Genericide

Velcro is right to be concerned about losing its trademark protection. Over time, the holder of a valid trademark may fall victim to “genericide.” The term refers to when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of their source. Well-known examples of trademarks that have been deemed generic include aspirin, escalator, thermos, and zipper.

The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic. Rather, a trademark only becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of good or service irrespective of its source. Ty Inc. v. Softbelly’s Inc., 353 F.3d 528, 531 (7th Cir. 2003).

As described in further detail in a prior article, Google recently prevailed in a lawsuit alleging that its trademark should be canceled on the ground that it is generic. While “just Google it” is a common phrase, the Ninth Circuit Court of Appeals held that the “verb use of the word ‘google’ to mean ‘search the internet,’ as opposed to adjective use, did not automatically constitute generic use.” The appeals court further held that the plaintiff failed to establish that the primary significance of the word “google” to the relevant public was as a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular. 

Velcro’s Educational Trademark Video

Velcro’s campaign is designed to protect the integrity of its brand and educate the public about the distinction between VELCRO™ brand hook-and-loop and other third-party hook-and-loops. While the company actively polices its trademark and provides guidelines for proper use, its latest intellectual property initiative is designed to reach millennials and other social media users.

“I think that any brand owner who has become famous … and is associated in particular with a product like this, has to be concerned about descriptive uses of their mark,” Alexandra DeNeve, legal consultant to Velcro Companies, said. “And, of course, the generic defense is one of the defenses available to infringers, so it’s something you always have to be aware of.”

The theme of Velcro’s campaign is simple: “Never a Noun. Never a Verb. Always on Brand.” It advises the public to always identify any non-VELCRO® Brand products by their common terms, including “self-fasteners,” “hook and loop,” “closures,” etc. 

The centerpiece (and most entertaining) aspect of trademark education campaign is a YouTube music video that features “the lawyers at Velcro Companies.” As the lyrics explain:

We’re a company that’s so successful, that everywhere you go, you see a scratchy, hairy fastener and you say ‘hey, that’s Velcro’. […] You think it’s awesome for us, we’re famous, but we’re lawyers and it’s causing us grief, because there are trademark laws being broken, it’s all here in this short legal brief. And we know that this is confusing, because Velcro brand is who we are, but if you call it all Velcro, we’re going to lose our circled ‘R’. This is called a ‘hook-and-loop’, this one’s a ‘hook’, this one’s a ‘loop’, you call it Velcro but we’re begging you, this is *bleeped* ‘hook-and-loop.’

Will Velcro’s Trademark Protection Tactic Work?

The response to Velcro’s trademark video has been mixed. The company has definitely generated buzz and reached more people than a traditional education campaign. The social media campaign spread quickly via Facebook and Twitter. It also has its own hashtag #DontSayVelcro.

However, it is unclear how many people will adopt the “hook-and-loop” terminology over the much shorter and easier to remember “Velcro.” Nonetheless, should Velcro’s trademark be challenged, the video serves as strong evidence that the company has taken significant steps to prevent misuse of its trademark.

If you have any questions or if you would like to discuss your copyright, trademark, or patent legal needs, feel free to contact me, William Samuels, at 201-806-3364.