Over the course of the last year Zoom became one of the most frequently used words.
Due to its popularity, Zoom has been used as an adjective (“I’m hosting a Zoom trivia night”), a verb (“I’m Zooming”) and a noun (“I have a 9 am Zoom”). In the more recent months of the pandemic, expressions like I’m “zoomed out” or my colleagues have “zoom fatigue” have also increased in popularity and form part of everyday speak.
Zoom is used by consumers instead of “virtual meeting” or “virtual chat”, even when using alternative tools such as Skype, Microsoft Teams, or Cisco’s Webex.
Founded in 2011, Zoom Video Communications, Inc. (”Zoom” or “the company”) gained its widespread popularity in 2020 due in large measure to the COVID-19 pandemic, which sent generations of people across the world into isolation and physically-distanced interactions. With millions of individuals confined in their homes, Zoom virtual platform permitted users to stay in touch with coworkers, family and friends.
The company’s impressive growth and popularity during the pandemic has some obvious upsides, but from a branding perspective, may come with a downside. The widespread adoption of Zoom as a term for any type of similar product, rather than a brand, may present trademark enforcement challenges for Zoom, due to the genericization of the trademark.
Genericization
When a brand becomes so ubiquitous that it becomes a generic term for any similar good or service, the trademark risks losing its distinctiveness, and further risks having its value depleted. In short, a brand’s value can be destroyed by its own success. Brand management can help mitigate such risks.
Coined trademarks and trademarks offering products that are new to the market are often the ones at risk of genericization. As the new, first of its kind product or service, consumers have taken the habit to refer to the goods or services with the name of the trademark.
When consumers use a trademark as the common word for the goods or services associated with the mark, rather than the identifier of the source of the goods or services, the mark risks becoming generic.
Several companies have struggled with the risk of having their trademarks becoming generic for decades:
Have you ever asked someone to Xerox something for you instead of asking them to make a photocopy?
Have you asked someone if they ever Googled themselves, or do you ask them if they searched up their name in a search engine?
With aggressive ad campaigns to educate consumers, several companies like the above, have been able to avoid genericide and maintained their trademark rights. Despite still being used as a generic term by the public, the trademarks XEROX and GOOGLE continue to be protected by their Canadian Trademark Registrations, in large part, because the companies have been able to educate consumers on their brand, and the appropriate use of their trademark.
Trademarks may become generic in one country without becoming generic in another. THERMOS and ASPIRIN were formally protected registered trademarks in the United States that have been found to be generic by US Courts, and invalidated. However, both THERMOS and ASPIRIN are still considered to be valid trademarks in Canada.
To avoid losing trademark rights and brand value, companies can adopt brand strategies to mitigate the risk of having their mark becoming generic.
How to protect your mark from genericization
A trademark can become generic if the trademark is not used correctly in association with the goods or services (for instance, it is not marked on the product itself or in advertising), if the trademark owner fails to enforce its trademark rights and prohibit the use of its mark in a generic way, and/or fails to educate the public on the proper name of the goods or services associated with the trademark.
Genericization is typically not a phenomenon that happens overnight – it can take years for the language to evolve and adopt generic terms. However, the COVID-19 pandemic may have accelerated the effect for some trademarks like ZOOM.
Consumers may understand that Zoom is a distinct platform from Skype, Microsoft Teams, or Cisco’s Webex. However, by adopting the word Zoom in describing other platforms, the brand may become vulnerable over time, particularly with the younger generation who may grow up understanding Zoom to be a generic term for videoconferencing.
There are several strategies a company may want to adopt to prevent its trademark from becoming generic.
1. Use the word “brand” after your trademark.
Help educate the consumer that your trademark is a brand and associated with the source of the product, not the product itself. E.g.: the “Band-Aid® Brand”.
2. Add a descriptor after the trademark
Adding descriptive terms of the goods or services after the trademark will make it clear the brand name should not be used as a generic term for the product.
3. Add the Trademark ™ or Registered ® symbol after your trademark
Adding the TM symbol for unregistered marks and the ® Registered symbol for registered marks after your trademark will inform consumers that your mark is a trademark, rather than the good or service itself.
4. Establish branding guidelines and internal “best practices”
Trademark owners should consider developing branding guidelines for their employees. Consider preparing a short explanation on the correct usage of your trademark to distribute to third parties, licensees, and general consumers.
5. Advertising
Use good judgement in advertising, and ensure your ads will not lead to confusion or dilute your brand. Advertising can be a great tool to educate the public on your brand, and the correct way to use your trademark. See for instance, this video by the Velcro Brand Companies. Other examples include Xerox’s efforts to educate its consumers in the US on the use of its brand name, and other advertisements with the tag line “You can’t Xerox a Xerox on a Xerox”. Similarly, see Nintendo’s ad “There’s no such thing as a Nintendo”.
6. Consider design marks and non-traditional marks
Design marks and non-traditional marks (which include a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign) are a great way to optimize your trademark portfolio to mitigate the risk of your brand becoming generic. For instance, in addition to applying to register several trademarks including the word ZOOM, Zoom also applied for other word marks (ZOOM ROOMS, ONZOOM, ZOOM FOR YOU), and applied to register its unique blue logo:
7. Enforcement of your brand
Brand owners cannot afford to be complacent when it comes to enforcement – otherwise, they run the risk of losing their mark’s distinctiveness and value. Police and enforce unauthorized use of your trademarks to prevent their genericization.
Market leaders have a significant competitive advantage. While brand recognition is a key to success, it is important to develop and implement brand policies to protect trademarks and to maintain a brand’s distinctiveness. By developing marketing and trademark monitoring strategies, companies build and strengthen their brand awareness while preventing the genericization of their marks.
While Zoom sales have boomed over the course of the last year, are its trademarks heading towards a generic bust? We hope not.
