A trademark must be able to distinguish the owner’s goods and/or services from those of others. Ironically, when a trademark becomes too popular, it could lose this essential function. A trademark loses its distinctiveness when it becomes synonymous with the goods or services in ordinary parlance.
In the recent decision 8073902 Canada Inc. v. Vardy, the Federal Court ruled that the trademark DIAL-A-BOTTLE had lost its distinctiveness due to the unlicensed use of the DIAL-A-BOTTLE mark and variations thereof by many businesses and persons for many years. Inconsistent, ineffective and late efforts to enforce trademark rights were determined by the Court to be insufficient for the trademark owner to retain its exclusive rights to the trademark. In this case, the trademark owner sent out cease and desist letters, demanded internet advertisements be removed, and commenced but later discontinued actions at the Ontario Superior Court of Justice. The Court ruled that these efforts were neither sufficient nor timely. Consequently, the registration for the DIAL-A-BOTTLE trademark was expunged.
To avoid genericide, trademark owners should avoid use in a ubiquitous and generic manner, and take immediate and meaningful actions to enforce trademark rights when they become aware of unauthorized uses.