Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Use It (in Commerce) or Lose It!

Posted in Trademarks

Before a U.S. application filed on an in-use or intent-to-use basis may proceed to registration, the applicant must show that the mark has been used in commerce.  Being right about whether the mark has been used in commerce is important. In fact, the validity of the resulting registration may depend on it. Using a mark in commerce means using it in commerce Congress may regulate. Generally, this means using the mark in interstate commerce, foreign commerce, or commerce with Native American tribes. If you want more detail and citations to the statute, you can read this article.

Determining when and how to claim that a mark has been used in commerce is sometimes easy. When someone has shipped goods bearing the mark across state lines, there is use of the mark in commerce. But sometimes deciding whether use of a mark rises to the level of use in commerce is not so easy, especially when sales occur within a single state. Recently, the Federal Circuit issued an opinion that makes this a little easier for mark owners seeking to prove use of a mark in commerce.

In Christian Faith Fellowship Church v Adidas AG, Case No. 2016-1296 (Fed. Cir. Nov. 14, 2016), the U.S. Court of Appeals for the Federal Circuit held that the in-state sale of two hats bearing the mark to an individual who resided in another state and traveled to the mark owner’s bookstore to make the purchase counts as use of the mark in commerce.

churchhat

Christian Faith Fellowship Church (the “Church”) serves a congregation comprised of Illinois and Wisconsin residents. It began selling clothing bearing the phrase ADD A ZERO in its bookstore in January 2005 as part of a fundraising campaign.

shirt

The Church applied to register the mark in standard character and stylized forms for use in connection with clothing. The applications were based on use in commerce. Shortly after the applications proceeded to registration, Adidas AG sought to cancel the registrations because they had been cited as obstacles to registration of Adidas’ application for ADIZERO for use with clothing.

The Trademark Trial and Appeal Board (the “TTAB”) granted Adidas’ petition for cancellation on the grounds that the Church had failed to use the marks in commerce prior to filing the in-use applications to register ADD A ZERO. The Church argued that it had made use of the mark in commerce, as evidenced by the sale of two hats to a Wisconsin resident. The evidence supporting this defense consisted of a canceled check dated February, 2005 and cross reference to the bookstore’s sales register.

The TTAB concluded that the sale of two hats bearing the mark at minimal cost within a state to an out-of-state resident was too de minimis to affect commerce Congress may regulate and therefore did not constitute use in commerce.

The Federal Circuit disagreed. With its decision, the Court emphasized that when Congress regulates a class of activities, the courts cannot exempt individual instances of such activities as too trivial to qualify. The Court took care not to define the outer parameters of Congress’s commerce clause power. The aggregation of sales of goods to out-of-state residents would have a substantial effect on interstate commerce and therefore a single sale to an out-of-state resident qualifies as use in commerce under the Lanham Act.

This result will be good news for smaller mark owners. The decision means that mark owners that sell only within a state will have to amass less evidence to support a claim to use of the mark in commerce.

Writing Off Your Rights

Posted in Brands, Copyright, Trademarks

 

I have twins.  Yes, we have two of most everything.  No, it doesn’t make it easier.  The twins don’t always remember who owns what or whether the object was traded.  I hear a lot of, “That’s mine!”  Somehow, that familiar childhood fight doesn’t seem to change as we grow up, and many of my clients suffer from the same dilemma.  Two people think they have rights to the same thing.  I haven’t found a magic bullet to end my kids’ disputes, but it is an easy fix for business clients – put it in writing.

contract

 

 

 

 

Is someone else involved?

Many times, this comes up because a client fails to get a written, complete contract signed by someone they have hired to do something for them:

  • Creator of a website, artwork, or marketing materials
  • Host of your website
  • Photographer or videographer
  • Manufacturer or supplier
  • Printer or publisher
  • Distributor or supplier

If you don’t have a contract, there is likely to be a disagreement about what each party can do – a disagreement which usually arises after the relationship has soured and neither party has an incentive to cooperate to work out a reasonable solution. A few legal dollars spent early in the relationship clarifies rights and roles and is far less expensive than the cost of handling a legal dispute.  You know the saying… an ounce of prevention, and all that jazz.  Think of the legal spend as insurance.  If you have a clear contract that defines usage rights and the actions each party can take, it also helps prevent a dispute about what you otherwise assumed would happen down the road.

Make sure the contract actually talks about ownership.

If you have a contract, make sure it describes more than just price. An incomplete contract is just as bad as no contract at all.  You need to specify which party owns any trademarks and copyrights that might be involved and clarify what the other party’s right to use those trademarks and copyrights entail.  You also need to address what each party can and cannot do if the relationship ends.  Too often, the contract doesn’t say anything about ownership or usage rights and is ultimately the root cause of the dispute.

Top 5 Cautionary Examples:

  1. Domains – if someone else registers a domain name for you, make sure the registration is in your name and that your contract specifies that the domain is your property. Domain names often include or become your trademark.
  2. Websites – similarly, if someone else hosts or creates website content for you, make sure your contract specifies whether you own that material and whether you can end the contract and take your site to another vendor. Technically, this really falls under copyright ownership, but the website content is usually focused on your branding and is a primary trademark branding vehicle.
  3. Photographs/Videos – just because you pay for it, doesn’t mean you own it. Actually, the person who creates it is usually the owner unless there is a contract assigning the rights to the customer.  If you want to later discuss owning the photograph or video, it is going to cost more than you probably would have paid if you clearly defined that you are purchasing ownership rights and not just a right to use the work.  Again, this really is copyright ownership, but the artwork might be used on your product labeling or other marketing materials that are crucial to your brand.
  4. Distributors – if you give anyone else permission to sell products for you, you need to clearly articulate that you are the owner of the product’s trademarks. Distributors and suppliers have separately registered trademarks and have gotten into disputes with the would-be trademark owner about who really owns the mark.  You also need to spell out whether the distributors can use your trademark as part of their own business names or whether they can have their own websites that use your trademark in their domains or web address.  These are much harder to get back after you terminate a relationship and can result in a website that uses your trademark in connection with the promotion or sale of a competing product.
  5. Manufacturers/Printers – if someone else is making products for you that have your mark on them, then your contract needs to specify that you own the mark and spell out what rights the manufacturer has to make anything that includes your mark.

 

The bottom line is – get out of court and get it in writing!

 

 

Hitman Glass Hit With Default Judgment

Posted in Uncategorized

Hitman Glass is in hot water with Starbucks over use of a nearly identical version of Starbucks’ famous logos on a line of glass bongs, t-shirts, and pins. Things really heated up for Hitman Glass when Starbucks was granted a default judgment against the company. Starbucks filed its complaint last June, alleging trademark infringement and false designation of origin, but received no answer.

starbucks
Starbucks filed a motion for default judgment and sought a permanent injunction for this blazing infringement, as well as compensatory damages, actual relief, and attorneys’ fees. Surprisingly, products bearing the infringing marks (likely not the t-shirts and pins) sold for up to $8,000.

The court found the damages sought by Starbucks to be reasonable and granted Starbucks $410,580 in damages and attorneys’ fees.

Since Hitman Glass failed to even respond to the complaint, it’s likely this case is cooked. However, it is likely that the defendants’ products were intended to be a parody. Regardless, owners of famous marks feel obligated to protect even parody versions of their marks.

Starbucks is no stranger to parody cases. In 2001, Starbucks brought an action for dilution by starbucks charbucksblurring against Wolfe’s Borough Coffee, Inc., to enjoin use of the marks MISTER CHARBUCKS, MR. CHARBUCKS, and CHARBUCKS BLEND. Ultimately, the Court of Appeals found these marks to fall under parody protection. Had Hitman Glass defended itself, it might have followed the line of reasoning that Wolfe’s did. However, the result might have been different.

This is the Spinal Tap Lawsuit

Posted in Trademarks

“This is Spinal Tap,” with its eminent quotability, is a cultural touchstone. I had heard of it, but not seen the movie until last year, when my husband sat down to watch it with me as part of his Sisyphean task of filling in the gaps in my pop culture knowledge.

In comedy, timing is everything. Perhaps I just saw “This is Spinal Tap” too late in life, or after seeing too many other movies that bore its influence, to appreciate the novelty in the same way my husband did. The two of us spent the evening together watching it, one of us laughing hysterically (often in anticipation) and the other listening attentively for the punchline (often long past it).

So why would I choose this topic for a blog post? It’s all in the timing.

spinal

A few days ago, Harry Shearer sued Vivendi (and related entities), accusing the media company of cheating him and the other co-creators of “This is Spinal Tap” out of millions of dollars in profits from the movie, the soundtrack, and related merchandise sales through breach of contract and unfair business practices.

vivendiman

 

 

 

 

 

 

Mr. Shearer launched a website to persuade the public of his case:  http://www.fairnessrocks.com/. While much of the suit has to do with breach of contract and fraud claims, trademarks play a role too. The website timeline explains that in the last four years Mr. Shearer has been frustrated by Vivendi’s unwillingness to pursue trademark infringements that he brought to their attention, suggesting that this inattention diminishes the value of the reward he could otherwise expect to receive. The complaint includes a declaratory judgment claim for non-infringement of trademark rights.

In general, it looks like Mr. Shearer plans to show Vivendi how it could have been a better steward of the intellectual property assets associated with the movie, soundtrack, and related merchandise. Central to this effort is his exercise of termination rights with respect to the copyright assignments, which would cause any copyrights arising out of the works that he had previously assigned to revert to him. Through his company, Century of Progress Productions, he has also filed intent-to-use trademark applications to register SPINAL TAP and DEREK SMALLS for use with entertainment services, printed matter, and clothing. (But no figurines??)

stonehenge

Photoshop credit: my husband

The complaint asserts that Vivendi attempted to selectively enforce the Spinal Tap-related trademark rights against Mr. Shearer by interfering with his efforts to use the marks without a license from them (even though they and their subsidiaries allowed multiple Spinal Tap-related trademark applications and registrations to go abandoned or be canceled and did not enforce the marks against others in recent years). The complaint argues that this controversy supports his request for a declaratory judgment that his use of SPINAL TAP and DEREK SMALLS in connection with the goods and services set forth in the applications does not infringe Vivendi’s allegedly abandoned trademark rights.

Whether Mr. Shearer’s claims against Vivendi or his own efforts to commercialize the intellectual property assets related to “This is Spinal Tap” will succeed remain to be seen. But Mr. Shearer’s instinct that the trademark rights are a critical piece of the puzzle are supported by the movie’s persistent popularity over time and the marketing opportunity that seems inherent in such popularity. While superhero and children’s movies seem to make the most of licensing, the Star Wars series demonstrates that beloved cultural icons may have the most success long term. Clearly there is a market for fans of pop culture classics like “This is Spinal Tap.”

If Mr. Shearer has the chance to pursue his project, perhaps the next time we go to the store we will see amps that go to eleven.

Supreme Court to Hear “Offensive” Trademark Case.

Posted in Copyright, Trademarks

Fall is finally here and football season is well underway.  It appears that the clash between free speech and trademark protection is headed to the Super Bowl, but it won’t be the Washington Redskins on the field.

The Washington Redskins are still using their same mascots and images despite a court ruling cancelling several trademark registrations on the basis that the term REDSKINS is disparaging to Native Americans.  The team has an appeal pending at the Fourth Circuit Court of Appeals but pulled a Hail Mary by asking the Supreme Court to leapfrog the Fourth Circuit and review its case (read our prior blog here).  The Supremes declined to hear the Washington Redskins’ case out of turn but will hear another case that could have an impact – Lee v. Tam, a case deciding whether an Asian American rock band called THE SLANTS should be permitted to register their band name.  The Slants chose their name to reclaim the term and pay tribute to their Asian heritage since they tout themselves as the only all Asian-American rock dance band in the world.

The Slants case challenges the constitutionality of the portion of the trademark law (the “Lanham Act”) that prohibits the registration of marks that are disparaging, which is the same provision under which the REDSKINS registrations were cancelled.  The U.S. Patent and Trademark Office refused registration of the mark THE SLANTS, finding it disparaging to Asian Americans (read our prior blog here).  On appeal, the Federal Circuit invalidated the anti-disparagement clause of the Lanham Act as an unconstitutional violation of the free speech guarantees of the First Amendment.  Key issues were whether the test for what rose to the level of an unregistrable disparaging mark was vague and whether it restricted speech.  Registration is a separate benefit and does not necessarily determine a party’s right to use a mark.

What do you think?  Should marks that are offensive to a large number of people be permitted to be federally registered at the United States Patent and Trademark Office?

 

 

Pirates of the Pacific… Northwest

Posted in Uncategorized

This is the year for territoriality issues in trademark disputes. As we reported previously, Bayer and Belmora have locked horns over the question of whether someone who owns a trademark in Mexico (and does not use the mark in the U.S. or own a U.S. trademark registration) could bring an action for false advertising, false association, and trademark cancellation in the U.S. based on the defendant’s use of the mark in the U.S. The U.S. Court of Appeals for the Fourth Circuit held that such claims could be brought. (Belmora has sought an extension of time to petition the U.S. Supreme Court for certiorari).

Now another trademark dispute moves the geography focus north and inverts part of the scenario.

Last week, the U.S. Court of Appeals for the Ninth Circuit reversed a district court’s dismissal of Trader Joe’s Lanham Act claims against Michael Hallat, aka Pirate Joe’s (but affirmed the dismissal of the state law claims). Trader Joe’s Company v. Hallat, Case No. 2:13-cv-00768 (9th Cir. Aug. 26, 2016). The district court had dismissed Trader Joe’s claims because Mr. Hallat operated in Canada, where Trader Joe’s does not own a trademark registration, use its marks, or do business. The appellate court reversed, finding that the facts favored extraterritorial application of the Lanham Act (the federal trademark statute).

What does E.T. have to do with trademark law?

Not extraterrestrial, extraterritorial.

The defendant in this case is an “alien” (according to the USCIS), but not that kind of alien. In fact, he’s a lawful permanent resident of the United States, and that was one of the factors the court considered in concluding that Trader Joe’s could move forward with its case against him.

Trader Joe's

As you may know, Trader Joe’s is a grocery store that prides itself on stocking high quality, hard-to-find foods, branding them under the TRADER JOE’S mark, and selling them at appealing prices. Trader Joe’s operates over 400 stores throughout the United States. It does not have any franchisees or licensees. It is so popular that its reputation has reached Canada even though Trader Joe’s does not operate there. Canadians regularly drive down to Washington state to purchase groceries from Trader Joe’s.

One such Canadian, Mr. Hallatt, made a habit of driving down to a Washington state Trader Joe’s store to purchase sufficient quantities of goods for resale back in Canada. Moreover, he opened a retail outlet and ultimately called it “Pirate Joe’s.” There, he sold the Trader Joe’s-branded goods he had purchased in Washington and brought back to Canada at inflated prices.

pirate joe's

Mr. Hallat’s establishment

Trader Joe’s did not take kindly to this pernicious form of flattery. It alleged that Pirate Joe’s had used Trader Joe’s marks to promote the goods and services, operated a website accessible from the U.S., displayed a sign reminiscent of the font in Trader Joe’s signs, decorated the location to mimic Trader Joe’s trade dress, and did not follow Trader Joe’s quality control standards when transporting the goods to Canada. Trader Joe’s cites to one customer who became sick after consuming a product sold by Pirate Joe’s. Trader Joe’s alleged multiple Lanham Act claims (including trademark infringement, unfair competition, false endorsement, false designation of origin, and dilution) and two state law claims (dilution and deceptive business practices) against Mr. Hallat.

hallat 3rd post

In response to the lawsuit, Mr. Hallat changed the sign.

The district court dismissed Trader Joe’s claims for lack of subject matter jurisdiction saying the Lanham Act did not apply to Pirate Joe’s acts in Canada. Trader Joe’s appealed and the U.S. Court of Appeals for the Ninth Circuit reversed the district court’s decision with respect to the Lanham Act claims.

The Ninth Circuit ruled that whether the Lanham Act applies to acts outside the U.S. is about the merits of the case, not whether the court has authority to hear it. The Lanham Act would apply to acts outside the U.S. if (1) the alleged trademark violations have an effect on U.S. foreign commerce, (2) the effect is great enough to present an identifiable injury under the Lanham Act, and (3) the interests and connections to U.S. foreign commerce are sufficiently strong compared to the interests of other nations to justify the assertion of authority over the acts abroad.

Here, the court found that Mr. Hallat’s conduct (especially the failure to use quality control practices that comply with Trader Joe’s standards, the inflated prices, and poor customer service) harms Trader Joe’s reputation in the U.S. and thus decreases the value of its U.S. marks. This is an effect on U.S. commerce that causes an identifiable injury under the Lanham Act. The connections with U.S. foreign commerce were strong enough compared to those of Canada to warrant the court’s assertion of authority outside of the U.S. In fact, all the subfactors of this third factor except one weighed in favor of asserting such extraterritorial application of the Lanham Act (for example, there are no proceeding between the parties in Canada, Trader Joe’s is an American company and Mr. Hallat a lawful permanent resident, the court could enforce its order against Mr. Hallat, and Trader Joe’s reputation among Canadians was important to the business of the store in Washington state).

The number of cases involving trademark disputes that touch on practices or rights located outside the U.S. is likely to increase as the world gets smaller. It will be interesting to see how these cases develop.

For the moment, Trader Joe’s lives to fight another day. So Canadians can get their pirated, expensive, perishable foodstuffs of questionable condition while supplies last! Or they could just make a grocery run to the U.S. as an excuse to visit their friendly neighbors to the south!

Does One Life Matter?

Posted in Trademarks

No.  At least not according to a recent decision rendered earlier this month by three judge panel at the Trademark Trial and Appeal Board.

The Applicant, Tres Vidas Organic, Inc., sought to register the following mark for tequila and tequila infused with vitamins:

tres

 

The English translation of “TRES VIDAS” is three lives.

Unfortunately for the Applicant, another company was already selling tequila under the mark DOS VIDAS  (which translates as two lives) and had obtained a federal trademark registration for the use of its mark.

tequila

The Trademark Examining Attorney refused registration of TRES VIDAS on the grounds it was confusingly similar to the previously registered mark DOS VIDAS.

The Applicant appealed and earlier this month the TTAB affirmed the refusal to register.  Although TRES VIDAS is indeed just one more life than DOS VIDAS, the TTAB found that the goods (tequila) are legally identical and would travel through the same channels of trade to some of the same consumers, and that the marks, when viewed in their entireties, are also similar in sight, sound, connotation and commercial impression – such that there would be a likelihood of confusion in the minds of the consuming public.

The Applicant argued that its mark had another, more mystical meaning.  It argued that its TRES VIDAS mark would be understood as referring to the Mesoamerican religious and cultural concept of three worlds where the tree acts as a symbol of life.  The Applicant even submitted Wikipedia evidence which included an entry for “Mesoamerican religion” which stated, “The importance of time is seen in the cycles of life, death and regeneration, which are something worshipped in almost everything existing.”  The TTAB would have none of it.  Noting that the Applicant failed to introduce any evidence that even begin to suggest typical tequila consumers are aware of Mesoamerican theology, the TTAB found that it is likely that consumers would expect TRES VIDAS to be merely another line of tequila made by DOS VIDAS.

As an aside, vitamins in tequilla?  Really?  What, is that supposed to make it a health drink or something?  Perhaps it’s just a proactive approach to combat a hangover?

Regardless, to learn more about this decision, check it out here:  In re Tres Vidas Organic, Inc., Serial No. 86609789

Audits: They’re Not Just for the IRS Any More

Posted in Patents, Trademarks

uspto

Recently, the United States Patent and Trademark Office (the “PTO”) issued its 5,000,000th registration. (Congratulations to the owner of COASTAL TACO BAR + CHILL!). It took until 1974 for the PTO to issue the 1,000,000th registration, but only about five years lapsed between the 4,000,000th and 5,000,000th registrations. Not only is the number of trademark registrations growing, the rate of growth is increasing too.

The ease of electronic filing and other factors likely contribute to the rapidly growing number of federal trademark registrations. The register is getting crowded, raising questions about whether all those registered marks are really in use with all those recited goods and services.

In an effort to preserve the integrity of the register, the PTO has proposed a new rule to make permanent a pilot program it ran four years ago. Through the pilot program, the PTO audited declarations of use associated with 500 registrations for marks that included more than one good or service in a particular class. As you know, to maintain a registration, it is necessary to file a declaration of use between the fifth and sixth anniversaries  and every tenth anniversary of the registration date. This requires submitting a specimen showing the mark in use and declaring under oath that the mark is in use with all the goods and services set forth in the registration. During the program, for the PTO required registrants for randomly-selected registrations to submit proof of use of two more goods or services in the registration (besides those shown in the specimen originally submitted). If the proof was inadequate or if the registrant requested deletion of the additional goods or services, the PTO selected an additional two for proof of use. In the end, 422 of the 500 registrations received notices of acceptance of their declaration of use. But just over half of the audited registrations were left with at least one good or service deleted as a result of the audit.

If the audit program is made permanent, the PTO could ask up to 10% of the registrants filing a declaration of use to submit additional proof (information, exhibits, declarations, or specimens)  to support use of the mark on specified goods and services beyond that shown in the specimen originally submitted.  If registrants cannot satisfy the PTO’s request, they will have to narrow the identification of goods and services in the registration or allow it to be canceled.

This measure will probably have the intended effect of confining audited registrations only to the goods and services with which the mark is in use (though there will surely be some unfortunate casualties as well). While the proposed program may impose some additional time and expense on the audited registrants, overall, it may save others the time and expense associated with avoiding or removing an unnecessary obstacle to registration.

This is just one more reminder to be conscientious about what goods or services are set forth in the application, statement of use, and declaration of use and to be prepared to prove use for all goods and services in the registration.

The PTO has published the proposed rule for comment. Comments must be received by August 22, 2016 and may be submitted in a number of ways, including email at TMFRNotices@uspto.gov and should include the number PTO-T-2016-0002.

What is the difference between a business name and a trademark?

Posted in Trademarks

For that matter, what about fictitious names, dbas and trade names?

Recently, I’ve talked to a number of small business owners who have interesting and profitable businesses.  These businesses range from mechanics, to pastry stores, to musical bands.  Recently, I’ve begun asking for more detail as to what these businesses actually were.  This discussion always leads to confusion because many people do not know.

The easiest way to explain the differences between trademarks, business names, fictitious names, dbas, and trade names is to divide them into two groups:

  1. Business names, fictitious names, dbas, and trade names.

Whenever someone does business as something other than as his/her own name, states require registration of that business name as well as identification of the owner before they can conduct business in that state.  This requirement makes sense because it creates a record of who really runs a business in each state and where how can be located.  Jenny Silver may bake cakes at her house and sell them with a website and business cards that identify her business as Homemade Cakes.  Without a registration requirement, if Jenny’s website and cards didn’t identify her, there would be no way for a customer or vendor to know that Homemade Cakes was really just Jenny.  Once Jenny registers her business name in a state (typically at the Secretary of State’s Office), anyone can search that business name and find Jenny’s contact information.  Some states call these registrations business name registrations, fictitious name registrations, dbas, or trade names.  They are simply formal public notice registrations of the person who is doing business as the registered name.

A company must also register to do business in each state where it operates, typically under its legal name.  If its legal name has already been taken in a particular state, then it will need to register a fictitious name or dba in that state.  This is true regardless of the company’s trademark rights in the name.

These business name registrations, fictitious name registrations, dbas, or trade names aren’t intended to provide the business owner any protection against competitors but simply to notify the public of the true owner and provide the owner authority to do business in a state.

  1. Trademarks

Trademarks, including trademark registrations, are different.  Trademark registrations do not grant any approval to do business in a state, but instead grant the trademark owner the right to prevent competitors from selling the same goods and services under the same or a similar trademark.  U.S. Federal trademarks are effective throughout the country while state trademarks are of limited effect.  Additionally trademark rights begin forming when the owners begins using the trademark, regardless of whether it is registered.

So in a way, trademarks are the opposite of business names, fictitious names, dbas, and trade names.  Trademarks keep others away from your products and services while name registrations allow you to operate in a state.

Genericide

Posted in Uncategorized

rip

Genericide:  a word that strikes terror in the hearts of any trademark owner or brand manager.

What exactly is genericide?  It’s the trademark equivalent of homicide.  It is when a mark becomes so successful and  well known for a given product or service in that it no longer is source identifying.  Rather, the mark identifies the class of product or service and has become generic – thus killing the trademark.  One can just cry over all that good will and brand equity vanishing once a mark becomes generic.

Although rare, a recent decision by the Trademark Trial and Appeal Board reminds us that genericide remains a real threat to those brand owners lucky enough to have highly successful marks.

Some well-known examples of words that once were valuable trademarks but are now generic and not protectable (and least in the United States) include:

 

Escalator             Otis Elevator Company

Thermos              King-Seeley Thermos Company

Yo-Yo                   Duncan Toy Company

Aspirin                 Bayer AG

Cellophane          DuPont

Trampoline          George Nissen and Larry Griswold

Dry Ice                 DryIce Corporation

Zipper                  B.F. Goodrich

 

Vigilant trademark owners take steps to protect their marks to prevent genericide.   Careful owners use the generic name of the goods to describe their product in connection with their brand name.  Think Band Aid® brand bandages.  Or Q-Tips® cotton swabs.  If you are fortunate enough to be the first entrant into a product category, create a generic term for the product.  Otis Elevator could have advertised ESCALATOR brand moving stairs.

If your mark is federally registered, be sure to use the ® to let the public know.  If not, you can still use ™ or use all caps or a distinctive font to show the world your mark is just that – a mark.  For example, APPLE computers or XEROX copiers.

Use care when referring to your mark.  Do not use it as a noun, but rather as an adjective.  For example, it’s not a Kleenex, but it’s a KLEENEX facial tissue.  Do not use your mark as a verb.  Example, do not Google a particular presidential candidate to learn of her qualifications.  Instead, conduct a Google® internet search.  Check out the Google® rules for proper trademark usage.

Police your mark and object (politely of course) to others’ misuse of your mark.

Lastly, if need be, educate the public on how to properly use your mark.  Xerox Corporation actively battles genericide by educating the public.  Remember its famous ad:  “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.” Or a trademark lawyer’s favorite, “When you use ‘xerox’ the way you use ‘aspirin,’ we get a headache.”