Fill in the blank; My favorite part of a hockey game is when the __________ clears the ice during intermission. Chances are you filled the blank with the name Zamboni. That is the challenge that Zamboni, the manufacturer of ice resurfacing machines, is currently facing.

Zamboni is the trademarked word given to the company that Frank J. Zamboni began in the early 1940’s. After establishing an electrical service business, which catered to the local dairy industry, Frank and his brother, Lawrence, expanded their business to meet the demand for cooling in the produce industry to protect dairy products transported by rail.

Frank and his brother soon looked to expand their business again by capitalizing on their expertise with ice. With the popularity of ice-skating growing rapidly, they found their niche; manufacturing ice resurfacing machines. Their business quickly took off.

However, Zamboni’s dominance in the field would come back to haunt the company sixty years later. Now the name Zamboni is so widely associated with the class of ice resurfacing machines that it is feared the mark has become generic.

Zamboni even admits on its site, Zamboni.com, that its name has become “synonymous with the machine [Frank] invented.” In an effort to protect its trademark, Zamboni has placed an entire page on its site, solely dedicated to addressing its trademark concerns and how its suppliers and the public should properly use the trademark to protect its, still, Live status.

The company states on its Trademark page that, “The ZAMBONI brand name is a valuable trademark which we must diligently protect. Like Coke, Kleenex, and Jeep, it has close identity in the public mind with a particular type of commodity – but the public doesn’t always remember that it is a particular brand…. The machine is not ‘a Zamboni,’ it is a ZAMBONI ice resurfacing machine.”

Zamboni’s fears of trademark genericide are justified. Though the trademark’s status, as found from a search on the United States Patent and Trademark Office site, is still Live, there is mounting evidence that it is close to generic status.

Wikipedia, an online encyclopedia, which offers information provided by experts in particular fields around the world, already states that, “Zamboni has become a genericized trademark and most people refer to any ice resurfacer as a Zamboni.”

John Ingram, a professor of law at The John Marshall Law School, also questions the trademark’s strength. In an article published by the Buffalo Intellectual Property Law Journal, entitled, The Genericide of Trademarks,”he wrote, “There is every reason to believe that, despite the great efforts of many trademark owners, some currently protected trademarks will become generic and lose their protection. Among those that come readily to mind…as being in some danger of genericide, [is] …Zamboni (ice resurfacing machine).”

But what causes a trademark to become generic? Where might have Frank Zamboni gone wrong?

The Lanham Act states that, “The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof – (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

While arbitrary and fanciful words like Kodak and even suggestive words, like IVORY for soap, certainly qualify for trademark protection, words that are merely descriptive do not. Further, words that are “merely descriptive” but are so widely used that the public recognizes it as the trademark of a certain product or business, may gain “secondary meaning”, allowing it to receive trademark protection despite its “merely descriptive” nature.

However, despite the fact that a business or person receives trademark protection for a particular word, name, symbol, or device, does not necessarily indicate that they will enjoy that protection for the life of the mark.

If a trademark is not properly used and protected, it can lose its strength as an indicator of that good or service and become generic. A once valid trademark can become generic and, thus, invalid when the significance of the word otherwise known to the public as an indicator of origin, becomes an indicator of the nature or class of an article.

In this case, the word Zamboni is on the verge of, if it hasn’t already exceeded the point of, no longer serving as an indicator of Frank Zamboni’s product, but rather as an indicator of the class of ice resurfacing machines, truck-like machines used to clean and smooth the surface of an ice rink.

Often the genericide of a mark is not an indication of what the trademark owner has done wrong, but rather what he has done right in the way of marketing his good or service.

As Professor Ingram states in his article, “Trademark holders, especially those who also have a patented product, often encourage the public to use their trademarks as generic ‘household words.’ However, their success in doing so can backfire when consumers, over time, use these terms to identify the product rather than its source.”

We have seen examples of this phenomenon with marks such as PALM PILOT, WALKMAN, ROLLERBLADE, and ESCALATOR.

Thus, Frank Zamboni, himself, may have led to his mark’s genericide. Among more general examples of acquiescence in protecting the Zamboni mark, Zamboni allowed Charles Schulz, the creator of the PEANUTS comic strip, to use the Zamboni name in a generic sense in approximately fifty references in his comic strips.

One such strip (below) involves Snoopy watching his friend, Woodstock, drive the ice resurfacing machine, which clearly has no Zamboni mark on it. Snoopy says, “That Zamboni makes good ice.”

Musicians have made songs about the Zamboni and Sports teams have featured Zamboni races during intermission at hockey games. This has all led to the Zamboni name becoming the indicator of the class of ice resurfacing machines, despite the presence of several other manufacturers of the machines in the market, like Resurfice and Ice Master.

The news may not be entirely dire for Zamboni, however. There are several examples of trademarks once considered generic, like BAND-AID, KLEENEX, and ZEROX, that have recovered their strength as indicators of a particular origin of good or service.

But trademark owners, like Zamboni, must be sure to take proper corrective actions to revive their marks. For example, when the XEROX mark came in jeopardy of losing its protection, the company launched a media blitz, reminding the public to “photocopy” documents rather than “Xeroxing” them. Kleenex, too, was forced to remind consumers to use its “facial tissues.”

Zamboni may have taken its first step to revive its mark by publishing the Trademark page on its site. It is unclear, however, whether that will be sufficient.

But perhaps the next time someone asks you to fill in the blank in the statement above, you will fill it with “ice resurfacing machines made by Zamboni.”