Almost everyone remembers the video clip of University of Florida student Andrew Meyer yelling the iconic phrase “Don’t tase me bro!” Meyer caused a major disruption at a town hall forum and was caught on video yelling “Don’t tase me bro!” while being subdued by campus police. (Click here to see video here: http://www.youtube.com/watch?v=6bVa6jn4rpE) Of course, Meyer wasn’t thinking about the implications for the stun gun manufacturer Taser International’s trademark registrations. But the ensuing pop culture wave and spread of the phrase has Taser International and its trademark lawyers very concerned about Taser’s trademark registration rights. (Click here to see related Huffington Post article.) see story here: http://www.huffingtonpost.com/2012/12/05/taser-trademark-company-tasered_n_2218763.html)
Taser has invested significant resources in their trademark portfolio. They own over a dozen trademark registrations for the mark “Taser”. Taser has a trademark registration for each of a number of classes of goods – from nonlethal weapons to jewelry. As Taser International’s trademark lawyers know, the problem for Taser International is that the increasingly common use of “taser” and “tase” to describe a stun gun and the act of using a stun gun respectively may lead to the genericization of their mark. In other words, the trademark becomes the everyday word to refer to the product. So rather than using the word stun gun, people use the word taser to refer to a stun gun. If it gets to the point that “taser” is completely interchangeable with the word stun gun, the mark has become genericized and Taser International can lose its trademark rights. This is because one cannot maintain trademark rights over a term that is generic. If taser stops referring to the source of the goods and in fact refers to the actual class of goods, it no longer functions as a trademark but rather as a noun to identify a product.
A good trademark lawyer can provide useful advice on how to prevent your trademark from becoming generic. Genericization of a mark often occurs with a relatively new product or a product that so dominates a particular class that the trademarked name becomes synonymous with the whole class. A business may risk invalidation of its trademark registration when this happens. Examples of this include Xerox and Kleenex. For quite some time and with lingering effects, to “xerox something” meant to make a photocopy and Kleenex was a synonym for facial tissue. Xerox and Kleenex have to be vigilant in policing the use of these terms to be sure that their trademarks do not become a replacement for the product name.
Taser International is attempting to do this by contacting journalists who use the term “tase” or “taser” in their stories and asking them to use a different term. While it might seem like an impossible task to police all use of these terms, it can be successful. Just look at the Xerox and Kleenex examples. Their efforts underscore the importance of policing your trademark as a part of trademark maintenance.