Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm Insights

Will Velcro’s Unique Trademark Protection Strategy Stick?

Author: Scarinci Hollenbeck, LLC

Date: October 16, 2017

Key Contacts

Back

Velcro Launches Campaign To Prevent Loss Of Its Trademark Protection To Genericide

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.

Velcro Launches Online Campaign To Prevent Loss Of Trademark Protection to Genericide
Photo courtesy of Morguefile.com

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.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
Corporate Transactions: Best Practices for Successful Deals post image

Corporate Transactions: Best Practices for Successful Deals

Corporate transactions can have significant implications for a corporation and its stakeholders. For deals to be successful, companies must act strategically to maximize value and minimize risk. It is also important to fully understand the legal and financial ramifications of corporate transactions, both in the near and long term. Understanding Corporate Transactions The term “corporate […]

Author: Dan Brecher

Link to post with title - "Corporate Transactions: Best Practices for Successful Deals"
How to Conduct a Fair and Legal Employee Termination in 2025 post image

How to Conduct a Fair and Legal Employee Termination in 2025

Ongoing economic uncertainty is forcing many companies to make tough decisions, which includes lowering staff levels. The legal landscape on both the state and federal level also continues to evolve, especially with significant changes to the priorities of the Equal Employment Opportunity Commission (“EEOC”) under the Trump Administration. Terminating an employee is one of the […]

Author: Angela A. Turiano

Link to post with title - "How to Conduct a Fair and Legal Employee Termination in 2025"
Admin Dissolution for Annual Report: What You Need to Know post image

Admin Dissolution for Annual Report: What You Need to Know

While filing annual reports may seem like a nuisance, failing to do so can have significant ramifications. These include fines, reputational harm, and interruption of your business operations. In basic terms, “admin dissolution for annual report” means that a company is dissolved by the government. This happens because it failed to submit its annual report […]

Author: Dan Brecher

Link to post with title - "Admin Dissolution for Annual Report: What You Need to Know"
What Is Antitrust Litigation Law? post image

What Is Antitrust Litigation Law?

Antitrust laws are designed to ensure that businesses compete fairly. There are three federal antitrust laws that businesses must navigate. These include the Sherman Act, the Federal Trade Commission Act, and the Clayton Act. States also have their own antitrust regimes. These may vary from federal regulations. Understanding antitrust litigation helps businesses navigate these complex […]

Author: Robert E. Levy

Link to post with title - "What Is Antitrust Litigation Law?"
Dissolving Your Business: Essential Legal Steps to Protect Your Interests post image

Dissolving Your Business: Essential Legal Steps to Protect Your Interests

If you’re considering closing your business, it’s crucial to understand that simply shutting your doors does not end your legal obligations. Unless you formally dissolve your business, it continues to exist in the eyes of the law—leaving you exposed to ongoing liabilities such as taxes, compliance violations, and potential lawsuits. Dissolving a business can seem […]

Author: Christopher D. Warren

Link to post with title - "Dissolving Your Business: Essential Legal Steps to Protect Your Interests"
The Role of Corporate Restructuring in Mergers & Acquisitions post image

The Role of Corporate Restructuring in Mergers & Acquisitions

Contrary to what many people think, corporate restructuring isn’t all doom and gloom. Revamping a company’s organizational structure, corporate hierarchy, or operations procedures can help keep your business competitive. This is particularly true during challenging times. Corporate restructuring plays a critical role in modern business strategy. It helps companies adapt quickly to market changes. Following […]

Author: Dan Brecher

Link to post with title - "The Role of Corporate Restructuring in Mergers & Acquisitions"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!