September 28, 2017

Velcro Gets Creative in Protecting Its Brand from Generic Use

On August 28, I posted about a case involving the question whether "google" is a generic term for providing a search engine.

Now the good folks at Velcro Companies are fighting the same battle, but they're trying to attack the problem without litigation about whether the name of their product is generic â or possibly to provide ammunition in the event of litigation.

Yes, VELCRO is a brand, and a registered trademark. In fact, there are 23 active U.S. registrations for trademarks including the term "Velcro." The oldest of those was issued in 1958 and covered goods described as a "notion-namely, a synthetic material sold in ribbon, sheet, or piece goods form, said material having complemental parts which adhere to each other when pressed together and adapted for use as a closure, fastener, or button for closing garments, curtains, or the like." A 1975 registration uses terms that sound a little more familiar: "separable fasteners-namely, hook and loop-type fasteners and components thereof."

The mark is also registered in a graphic form, which looks like this, which also covers "separable fasteners, namely, hook and loop-type fasteners and components thereof" and other things that sound very similar:


The trouble is, some benighted people might be out there referring to hook and loop-type fasteners made by other companies as "velcro." You might have done that yourself.

The normal response to this situation is for the owner of the mark to take action to remind the public that VELCRO is a brand, not a generic term, and that the generic term for this stuff is "hook and loop," so please, please, please don't use our brand name generically. It works best if your campaign is one that people might like well enough to pay attention to rather than just turn past. Velcro Companies has done that with a new campaign: "Don't Say Velcro."

The crown jewel of the campaign is a highly-produced video featuring people purportedly from the Velcro Companies' legal team, singing and dancing while instructing you, with bleeped profanity, on the proper use of their mark. In fact, some of the cast are Velcro Companies' lawyers, but there are quite a few ringers in there, too. You can watch the video here, and I encourage you to do so:

Velcro Companies also has a couple of registrations for a mark that at least suggests that consumers should watch for "real" VELCRO-brand products (below), but those aren't nearly as good as a viral video.

Genuine Velcro Product

If you like the video, there's even a "behind the scenes" video here: