Safeguarding Trademarks: Insights from Past Disputes & the Taco Bell Case

Trademark protection is vital for preserving a brand's distinctiveness and preventing generic use/generalisation. Recent USA legal disputes, such as the ongoing Taco Bell and Taco John's case, serve as a good reminder for businesses to regularly review and reassess how they use and protect their trademarks.

The following examples  are relevant for those seeking to benefit off and protect Trade Marks in Australia and overseas. From these examples, we gain valuable insights into the importance of actively managing and safeguarding trademarks whether you are in Australia or overseas.

Historical Examples of Trademark Disputes:

Numerous cases throughout history highlight the risks of losing trademark protection due to generic use/generalisation. Let's revisit some examples:

1. Bubble Wrap:

Once a branded product, "Bubble Wrap" lost its distinctiveness and became a generic term widely used to describe various bubble-filled protective materials. This demonstrates how failure to protect a trademark can result in its loss of exclusivity.

2. Zipper:

Originally a trademarked term, "Zipper" became a generic term due to common usage. Despite initial registration in certain countries, the term eventually lost its distinctive character, highlighting the need for consistent and vigilant protection.

3. Aspirin:

"Aspirin" was once a brand name trademarked by Bayer AG. However, the loss of the trademark occurred after the term became a common term for pain relief medication.

4. App Store:

The term "App Store" was sought after by multiple companies, including Sage Networks, Salesforce, and Apple. However, due to its generic nature and widespread usage, trademark protection for "App Store" proved challenging.

The Taco Bell and Taco John's Case:

The ongoing USA dispute between Taco Bell and Taco John's over the "Taco Tuesday" trademark reinforces the need for businesses to review their trademark usage. Taco Bell's argument that a widely used phrase like "Taco Tuesday" should be freely available for all reflects the risks associated with exclusive rights over commonplace expressions.

So what do you do?

To avoid losing trademark protection, businesses should consider the following practices:

1.      Maintain Distinctiveness:

Actively use your trademark as a distinctive identifier for your products or services and discourage its use as a generic term.  

2.      Registered Trademark Symbol:

Display the registered trademark symbol "®" with your trademark to signify legal protection. Incorporate the symbol in marketing materials, packaging, and digital platforms to enhance brand recognition. (Just keep in mind before you use the above symbol you need to ensure you actually have it registered and it is registered in the right classes you are claiming it is a registered trade mark otherwise you could be up for big legal penalties

3.      Monitor and Enforce:

Regularly assess its perception and usage in the market to ensure it remains associated primarily with your brand. Keeping a vigilant eye on the market for any improper or unauthorised use of your trademark. Take prompt legal action against infringers to protect your brand's integrity and prevent dilution.

4.      Educate Consumers:

Proactively educate consumers about the specific brand association with your trademark. Emphasise its distinctive qualities and consistently reinforce the association of your trademark with your brand through marketing materials, packaging, internal documents etc to your relevant your products or services to avoid generalisation.

5.      Legal Support:

Get in touch with us to ensure you are getting the right trademark (and in the right class) registered, as well as get guidance on what supporting documents and actions you should be doing to maintain protection and enforce your rights if necessary.

These cases and disputes underscore the significance of actively managing and protecting trademarks. By consistently using trademarks as trademarks, monitoring improper use, and seeking legal guidance and support when needed, businesses can safeguard their brand distinctiveness and preserve the value associated with their trademarks.  You need to stay proactive in protecting your trademarks to ensure their ongoing exclusivity and to maintain the unique identity of your brand.

To learn more or to get working with us now, book a free no obligation initial discovery call.

Please note that this is a general and brief update, it does not purport to be comprehensive legal advice of all information and/or relevant to your circumstances. Consequently, specific legal advice for each of your circumstances should be obtained first before taking or not taking any action with respect to this area.