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John Barry, WD-40, and Trademarks

John S. Barry, a long-time executive of the WD-40 Company, died earlier this month in San Diego at age 84. We offer condolences to Mr. Barry’s friends and family, and take this opportunity to reflect on what Mr. Barry can teach us all about marketing, the power of brands, and the importance of selecting and effectively managing intellectual property legal assets.

WD-40 is literally a household name; it is estimated that the product can be found in up to 80% of American homes (it is also sold in 160 countries). The lubricant and solvent was developed by the Rocket Chemical Company in 1953 as a rust-prevention agent for the aerospace industry. The name WD-40 came straight from the lab – “Water Displacement agent, fortieth formulation.” First sold to the public in 1958 in a few San Diego area hardware stores, WD-40 achieved widespread success under the guidance of Mr. Barry, who joined Rocket Chemical in 1969 (and promptly renamed it the WD-40 Company). The principles Mr. Barry applied to marketing WD-40 remain sound business strategy.

1. Choose the most effective form of Intellectual Property protection.

Rocket Chemical never applied for a patent on WD-40, which would have required the public disclosure of its chemical formulation and manufacturing process. Additionally, any patent protection obtained in the late 50s or early 60s would have expired by 1980.

Rather, like the formula for Coke and Kentucky Fried Chicken’s secret herbs and spices, the WD-40 formula was not only maintained as a trade secret – it was heavily advertised as being kept secret, lending it an aura of exclusivity. Although the product has been reverse-engineered and copied by many competitors, the chemical formulation remains a trade secret, and that status is legally enforceable today. To ensure continued trade secret status, information should be tightly controlled – it should be identified (marked) as a trade secret; revealed only on a “need to know” basis to employees; and revealed to suppliers, venders, and contractors only under non-disclosure agreements.

Most importantly, the trademark WD-40 was registered at the U.S. Patent and Trademark Office in 1958 – a trademark that is still on the principle register, and still enforceable. A good trademark is fundamental to building a brand. So long as the mark is used to identify goods (or services) in commerce, trademark rights never expire.

2. Select distinctive marks.

Generic marks, such as “lubricant” or “water displacer” are not distinctive, and can never acquire trademark rights. Allowing one party exclusive rights to such terms would preclude others from legitimately describing the basic function of their products.

Descriptive marks, which describe some quality or feature of the product, also lack distinctiveness. Descriptive marks generally cannot acquire trademark status, unless used so widely and exclusively to identify goods or services that they come to denote the product’s source rather than merely describe its qualities. This is known in trademark law as acquiring “secondary meaning.” Although the initials in the mark WD-40 literally mean “Water Displacement” – a description of a primary use of the product – the mark quickly acquired secondary meaning as WD-40 came to identify not only a use of the product, but the lubricant/solvent itself. Additionally, it is doubtful most consumers were aware of the origins of the cryptic name WD-40, effectively making the mark fanciful rather than descriptive.

On the distinctive side of the spectrum, and automatically acquiring trademark rights through use in commerce, are suggestive, arbitrary, and fanciful marks. Suggestive marks merely suggest – as opposed to describing – some quality of the mark. Arbitrary marks are known terms that have nothing to do with the goods or services to which they are applied, such as using a fruit to identify a line of computers (Apple). Fanciful marks are the most distinctive type, being coined for the purpose of identifying goods (such as Exxon, Xerox, or, if the underlying notation is not known, WD-40).

3. Use distinctive packaging.

WD-40’s yellow and blue spray cans are nearly as recognizable as the brand name, and are the subject of several registered trademarks. Trademarking the colors (or shape, or other distinctive aspect) of product packaging helps consumers identify the product in the marketplace. In some cases, the color of a product itself may be registered as a trademark. To act as a trademark, the color must not be a natural result of the manufacturing process, it can add no functional benefit, and it must be distinctive and capable of distinguishing the product. Advertising of a product for which color is asserted as a mark should be directed to the color itself as a distinguishing feature. Examples include Owens Corning’s pink fiberglass insulation (promoted by the Pink Panther cartoon character) and UPS package delivery services (“What can brown do for you?”).

4. Strictly control product quality and licensing.

When Sears once offered to repackage WD-40 under its own label, Mr. Barry refused. He also maintained strict control of the product and all aspects of its marketing and distribution. Trademarks serve as a proxy to consumers for the quality of a product, and consumers may just as easily use a brand to identify products they don’t like, as those they do. Thus, the stronger a brand becomes, the more critical it is to tightly control product quality. This is particularly true if a trademark is licensed – the licensing agreement should include provisions for the trademark owner to monitor and ensure the quality of products bearing the mark.

5. Appreciate the importance of branding.

In interviews with Forbes magazine in 1980 and 1988, Mr. Barry acknowledged that other companies, such as 3M and DuPont, manufactured and marketed lubricant/solvent products similar to WD-40. However, he adroitly noted, “What they don’t have is the name.” In fact, in describing WD-40’s strategy to Forbes, Mr. Barry stated, “We may appear to be a manufacturing company, but in fact we are a marketing company.” With this awareness of branding and the power of trademarks, John Barry drove WD-40 to over $300 million in worldwide sales.