Velcro: fighting genericide one video at a time

“We’re a company that’s so successful that everywhere you go, you see a scratchy, hairy fastener and you say ‘hey, that’s Velcro’,” sang a choir of Velcro Companies ‘lawyers’ in a video that has been viewed more than half a million times since its release in September 2017.

“You think it’s awesome for us, we’re famous, but we’re lawyers and it’s causing us grief, because there are trademark laws being broken, it’s all here in this short legal brief,” they continued.

The video was created as a marketing ploy to educate consumers about the risks of using the ‘Velcro’ trademark in a generic manner, while encouraging them to use the fastening device’s correct name—hook and loop.

The marketing campaign was such a hit that a follow-up video was launched in June 2018.

According to US law, what is known as genericide is a form of abandonment: a mark will be deemed abandoned if it has been discontinued for three years with no intent to resume its use, or, more relevant for Velcro Companies, when the mark becomes a generic name for the goods or services for which it is used.

Brands that have fallen victim to genericide include Cellophane and Escalator.

Alexandra DeNeve, senior counsel, trademarks at Velcro Companies, tells WIPR that before the recent videos, the last campaign the company launched to fight genericide was in the late 1990s.

Acknowledging the crucial way that social media, the internet and digital advertising have vastly changed the way consumers communicate, Velcro saw an opportunity and seized it with both hands.

“It was definitely time to dust off and redo the campaign for the 21st century, so that’s what we did,” says DeNeve.

She explains that the ‘Velcro’ trademark was the brainchild of Swiss engineer George de Mestral, who invented the hook and loop fastener in the 1940s. The name Velcro is an amalgamation of the French words velours, meaning velvet, and crochet, which translates into English as hook. De Mestral invented the word in an effort to commercialise the product.

“Because it was one company offering this particular product for a long time, as often happens, the commercial name of the product and the generic name for the product became conflated,” says DeNeve.

Since the 1970s, when the patent expired, Velcro has been fighting off competitors who try to use its trademark-protected name in connection with hook and loop fasteners.

“When the patent expired, competitors moved in and they wanted to use the word—Velcro—that consumers associated with that product,” DeNeve elaborates. “It’s not an uncommon story.”

Good campaign

While the intention of the recent genericide campaign was to educate consumers about using the correct terminology, it came with the added benefit of “educating the educators”, DeNeve explains.

“The fact that the video was well received by the legal and advertising communities was a nice by-product, and not one that we had expected,” says DeNeve.

“This was a video directed to consumers and the public, and made in order to educate them about our brand and to re-introduce them to it.”

The campaign was generally well received by the trademark community and was labelled by WIPR readers as “refreshing” and “a creative approach” to reaching consumers.

DeNeve believes the power of social media helped to elevate the campaign and ensure that it was a success.

A couple of days after the video was launched, US singer John Mayer tweeted about his ‘Velcro’ trainers, to which one of his fans replied with a link to the Velcro video, informing the singer that they were in fact ‘hook and loop’ shoes. This resulted in a back and forth exchange between Mayer and Velcro’s brand team on Twitter.

“Not only did we reach all the people who were watching the video, but we reached a whole new audience of John Mayer’s followers, who number probably in the millions,” says DeNeve. “It was really great.”

Only part of the battle

Educating consumers about the correct use of the trademark is just part of the conflict in combating genericide. Velcro’s marketing campaign may have been successful, but enforcing its rights is another battle.

At any given time, Velcro is dealing with dozens of enforcement issues all over the world.

“The infringers come from the hook and loop competitors, who are selling B2C or B2B, and also from manufacturers of finished products that incorporate hook and loop where they misidentify the brand of hook and loop they are using in their product,” explains DeNeve.

With the rise of the internet, e-commerce has presented opportunities for counterfeiters to exploit the Velcro brand.

However, in some respects, this is easier to police than if the infringement was taking place in retail stores. Multiple jurisdictions can be monitored online, whereas Velcro’s IP enforcers would have to physically go into a shop to check whether it was engaged in infringing activity.

According to DeNeve, the brand receives notifications of infringement from different sources, including referrals from consumers, employees and retailers.

Velcro also employs MarkMonitor to enforce its IP rights all over the world on platforms including Amazon, eBay and Alibaba.

DeNeve says that by far, the majority of the infringement happens online.

“Most of our infringement occurs overseas rather than in the US, and in emerging markets such as China, India and Asia in general,” she adds.

When Velcro is notified of infringing activity, the first step is to contact the alleged infringer and inform them of the trademark laws. In some instances, the retailer isn’t aware that there is a difference between Velcro and other hook and loop systems.

“Occasionally, marketplace sellers will reach out to us and ask what they have done wrong,” says DeNeve.

“We have a paralegal who is tasked with communicating with them, and we do that in a positive and constructive way. We educate them about why they cannot use the Velcro trademark to identify the hook and loop they’re selling, or a product that employs a hook and loop fastener.”

The company explains to the infringer that ‘Velcro’ is a registered trademark which cannot be used for general purposes in marketing hoop and loop. To overcome this issue, Velcro will work with the infringer to give them ways to correctly identify their own product.

“If they provide us with evidence that in fact
the product they’re selling is a Velcro brand product or does use a Velcro brand product, we educate
them on how to attribute our trademark properly,” DeNeve says.

“Those conversations are—about 95% of the time—positive and go well. People are receptive to the message and they get it.”

Sometimes these conversations even lead to additional business for Velcro.

The company empowers and encourages its sales team to be “ambassadors” when enforcing the Velcro brand.

“We just had a situation in the UK where we had identified a company that was infringing our mark by using other brands of hook and loop but using our trademark to identify it,” DeNeve explains.