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Any business owner would be pleased to have its company become a household name or its brand used as a widely-known generic word.  The Zoom brand is experiencing this very “being generic” phenomenon right now.  With all of the current recognition, is there a downside?

Zoom’s popularity rose during the pandemic when the platform replaced face-to-face meetings with its videoconferencing capabilities.  The Zoom platform quickly became a critical daily foundation in conducting business.  

One year later, “zoom” is a generic verb to replace “video conferencing.” Consumers are now using the brand name universally.  Other companies have experienced the same fate, including Google, Kleenex and Xerox, to name a few.

When you cut yourself, do you ask for an adhesive bandage?  No, you ask for a Band-Aid.  When you want someone to conduct research on the internet, you say “google” it.  Do you ask someone to Xerox rather than make a copy?  These brand names gained traction as the semantic label for a product category.  The companies ran campaigns persuading consumers not to use their brand names generically to save their trademark value.

What about the Zoom trademark?

Zoom was founded in 2011 and registered its first trademark in 2017.  In April 2019, the company was worth $16 billion, and by April 2020, its worth had doubled.  As of March 2020, the company had 22 trademark registrations worldwide, which is a small portfolio for a company of Zoom’s size and success.  However, the Zoom app was intended to only be used by businesses with IT departments, and some suggest it was not prepared for the global success accelerated by the pandemic.  Its limited trademark protections include the US, Canada, EU, Australia and Japan.  Its small portfolio and considerable reputation makes Zoom an increasingly attractive target for infringement. 

Now that “zoom” is becoming a generic word that anyone else can use, there has been a surge of trademark registrations in the countries where the Zoom trademark is not protected, and domain names containing the word “zoom” have exploded.  While some registrations are legitimate, others are being sought out in bad faith and are infringing on Zoom’s trademark.

Is Zoom’s trademark doomed to genericide?

Genericide is when a brand name or trademark is transformed through widespread usage into a common noun. In 2017, the Ninth Circuit ruled that “Google” had not succumbed to genericide despite the general use of “google” as a verb.  The Court emphasized that the mark did not lose its source-identifying function (dual-purpose nature of a trademark) even though the mark was used as a verb.  Although people are using the term “zoom” to mean video conferencing, they also know that Zoom is a particular platform distinct from Skype, GoToMeeting, and Google Meet.

A trademark protects your brand’s value, reputation, and trust.  Registering your trademark is a proactive measure in protecting your brand from infringement.   The professionals at Ference & Associates have assisted business owners in over 100 countries with a full range of services relating to patents, trademarks, and copyrights.  Contact them at 412.741.8400 to help you properly register your intellectual property (IP).

Pittsburgh Office
409 Broad Street
Sewickley, PA 15143
+1 412 741 8400

About Us
Ference & Associates is a Pittsburgh, PA based law firm with a global client base. Our attorneys focus on patent, trademark, and copyright law.

 
 

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