September 7, 2014 at 10:06 pm #361Kevin CollinsParticipant
OK. I’m the non-expert on this list in trademark law, so slap me down if I’m off base. The casebook mentions two reasons for a mark being generic: born that way or genericide. However, it then treats cases in these two veins as interchangeable. It seems to me that each raises a completely different analytical issue. The former requires a distinction between generic and descriptive marks and the latter requires a distinction between generic and distinctive marks. Some tests only seem to be relevant for one or the other, e.g., the who-are-you/what-are-you test may be useful for the latter, but it is irrelevant for the former? Am I wrong to see these two as distinct issues that merit distinct analyses (and perhaps distinct discussions in a casebook)?
September 7, 2014 at 10:29 pm #362Deborah GerhardtParticipant
You raise a super interesting question. Words change meaning over time– and sometimes the path to getting to current meaning matters for trademark law, but I don’t think it does here. Whether the word started out as as a descriptive word (e.g. “lite”) or a fanciful word coined just to be a mark (e.g. nylon, yo-yo, aspirin), the question for the court or PTO is what the word means now. I find the genus species test unusable in either case, but I really like the who are you/what are you test. Here’s why. Take “yoga.” Is it a genus including the different species of yoga, like Bikram, hot, ashtanga, flow, or is it a species of types of exercise? Either way, if I see that a studio is offering a yoga class, I know what the class is, but the term signals nothing about who offers it. So I find it much easier to classify this and most terms using that test.
September 8, 2014 at 7:49 pm #363
This is actually a comment from Mike Madison, which I’m posting for him (a bit annoyingly, to reply to a comment, you’ve got to log on and reply within the forum rather than by email):
I mostly agree with Deborah, and I’ll add a couple of additional thoughts. First, the Abercrombie spectrum (which gives us generic, descriptive, suggestive, and arbitrary and fanciful marks) is an overlay on the common law and statutory framework, which focuses entirely (and solely) on the presence or absence of distinctiveness. So, when I teach protectability of marks, I hammer at “distinctiveness” a lot, and I hammer at related sub-themes, like the spectrum, and distinctiveness for design marks and trade dress, somewhat less. Second, at least in theory words and phrases (and other signs) can move both up and down the spectrum based on usage and practice, notwithstanding the usually accepted dictum that genericide consigns a mark to “non-distinctive” status for all time. (Nb. the possibility that even a generic mark might in some cases be the basis for relief under Section 43).
A question: Can anyone think of a mark that has been rescued from generic status? Or, at least, where efforts to do so have been at least partly successful? Google comes to mind; for a while, the company was pretty copacetic about consumer use of the mark “Google” both as a noun to refer to search engines generally, and as a verb. But the company changed its tune. I no longer here “to Google” something as frequently as a I used to, in the context of search in general.
September 8, 2014 at 7:51 pm #364
Mike asked about any marks that been rescued from generic status. McCarthy records that Singer and Goodyear were both distinctive, then went generic, and then were rescued. I find McCarthy’s discussion of the Goodyear mark (§ 12:32) not totally clear, but his discussion of the Singer mark (§ 12:32) is sort of interesting. Here it is below:
In 1896 the United States Supreme Court held that the word SINGER had become a generic designation of a certain class of sewing machines.1 However, the company continued to extensively advertise the SINGER mark and also used variations such as “S” and “Singer Sewing Center.” By 1953, one court said that the mark SINGER had been “recaptured” from the public domain by continuous and exclusive use and advertising on a wide variety of products.2 Both before and after the 1953 decision, courts protected the SINGER name as a strong trademark.3 Thus, the SINGER saga shows that it is possible for a company to reclaim a generic name back from the public domain, and by extensive advertising, give it trademark significance. However, it must be recognized that SINGER has gone back to being a valid trademark only by “educating” buyers into not using the term as the name of a class of sewing machines, but as a symbol indicating products coming only from one source.
The Singer situation was discussed in a case where the district court found a probability that “Lite” for beer, held generic on evidence of 1976 usage, had by 1980 been reclaimed as a mark, but the court of appeals reversed, saying that there must be proof that the word has ceased to have any generic meaning. The court explained the SINGER recapture as a situation where by 1953 SINGER “had in contemporary usage no generic meaning.”4
Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 41 L. Ed. 118, 16 S. Ct. 1002 (1896). But compare the sweeping statement of the Supreme Court that once a mark becomes generic, no subsequent change of law can make it back into a mark: “The right to individual appropriation once lost is gone forever.” Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 36, 45 L. Ed. 60, 21 S. Ct. 7 (1900).
Singer Mfg. Co. v. Briley, 207 F.2d 519, 99 U.S.P.Q. 303 (5th Cir. 1953).
See, e.g., Singer Mfg. Co. v. Axelrud, 28 F. Supp. 450, 42 U.S.P.Q. 622 (D.N.Y. 1939); Singer Mfg. Co. v. American Appliance Co., 86 F. Supp. 737, 83 U.S.P.Q. 112 (D. Ohio 1949); Singer Mfg. Co. v. Redlich, 109 F. Supp. 623, 96 U.S.P.Q. 85 (D. Cal. 1952); Singer Mfg. Co. v. Singer Upholstering & Sewing Co., 130 F. Supp. 205, 104 U.S.P.Q. 339 (D. Pa. 1955); Singer Mfg. Co. v. Sun Vacuum Stores, Inc., 192 F. Supp. 738, 129 U.S.P.Q. 100 (D.N.J. 1961); Singer Co. v. Unishops, Inc., 421 F.2d 1371, 164 U.S.P.Q. 631 (C.C.P.A. 1970).
Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5, 211 U.S.P.Q. 665 (1st Cir. 1981), rev’g 503 F. Supp. 896, 209 U.S.P.Q. 137 (D.C.R.I.).
September 8, 2014 at 7:59 pm #365
On Kevin’s initial question, I agree with Deborah that it’s both a super interesting question and that the various genericism tests probably work okay for both the born-generic and genericide situations. I’ll admit to now being wobbly on this, though. I do think you’re on to something, Kevin, in noting that in situations when we ask if a formerly distinctive mark has gone generic, the mark likely has significant secondary meaning at least for some proportion of consumers. By comparison, when we ask if a mark has been born generic, the best a court might find is that the mark is instead descriptive, and then the court would have to proceed to the question of whether the mark has secondary meaning. In this latter situation, perhaps courts improperly conflate in one inquiry what are two questions: (1) the question of generic versus descriptive, and (2) the question of descriptive with secondary meaning or descriptive without secondary meaning. I’m not sure how this plays out, but it’s worth thinking through.
Kevin, I’m nominating you to the trademark nerds club. Welcome.
September 8, 2014 at 8:21 pm #366Kevin CollinsParticipant
1. Barton, do I have to refer to you as “Key Master” from now on?
2. I decline the nomination, as the patent nerds might vote me off the island if they knew I had other alliances.
3. Yea, that is kinda what I was going after. I see what I think is the same conceptual confusion as well in the fact that all of the survey stuff in the generic-marks section involves survey evidence that is aimed at showing distinctiveness. The survey in the PRETZEL CRISPS case doesn’t seem to me to be at all relevant to whether PRETZEL CRISPS is a descriptive term or a generic term as the poll uses a category-brand binary rather than a genus-attribute binary. In contrast, in a case where the plain-meaning, non-TM sense of a word is clearly not descriptive (e.g., Pilades, as it refers to a person), then the survey data seem very relevant to providing genericide over time. Nobody is arguing that Pilades is a descriptive mark: its either inherently distinctive or not protectable.
September 9, 2014 at 1:23 am #367Michael MadisonParticipant
There’s a club? Are there meetings? I hate meetings.
But seriously. Thanks, Barton, for reminding me of the protocol and apologies for the confusion (and for the weird mis-spellings. Obviously I was more tired than I thought!). I appreciate your retrieving the McCarthy reference, though the text prompts me to wonder what “a Goodyear” was, if in fact that’s the question implied by its former generic status. (I can, and will, in due course, look it up; presumably, McCarthy is where the rubber meets the road.) Meanwhile, I continue to get a lot of mileage with my students from the fact that “Heroin” was once a mark.
I agree with Barton’s sense, reinforced by Kevin, that the directional arrows surrounding generic marks (born generic marks possibly becoming descriptive, or distinctive marks becoming generic) call for some nuanced weighing of survey evidence, among other things. But I also think that amid too much nuance, we lose the distinctiveness forest for the Abercrombie trees (or, to borrow my favorite metaphor of the moment, we lose the distinctiveness melody for the Abercrombie notes).
September 9, 2014 at 1:03 pm #368Stacey DoganParticipant
Sorry to be late to the game and thanks for the interesting conversation (I love reading these things after the fact – everyone has said everything there is to say, and I get to soak it all in). I would add only a couple of things. First, whatever courts purport to do analytically, it strikes me that they have very different predispositions for previously-distinctive words than for marks that began as generic/descriptive terms. As long as there’s no evidence that the TM holder itself participated in genericide (cf. Bayer), and as long as there’s a satisfactory alternative (“Kleenex brand tissues” “Xerox brand copier” vs “Thermos”), courts seem loathe to abrogate previously-existing rights. I’ve never studied genericide so this may be off-base but it’s an impression that I have..and as Mike points out, even when they find a mark generic, they will sometimes find a way to provide limited protection anyway. On the flip-side, they seem equally loathe to remove a word from the vernacular if it’s one of a handful of terms that logically encapsulate a product. (It’s almost like a gut-level, implicit merger doctrine, I think – doesn’t that feel like what was going on in Pretzel Crisp?). Second, I just want to note one point in Kevin’s last comment – the idea that names are different from descriptive terms. If something is perceived as a surname, then it’s essentially treated the same as a descriptive term – i.e., it requires secondary meaning for protection. I think there’s an argument that “Pilates” would not be perceived as a surname, so your point above (that the situation in Pilates was inherently distinctive vs generic, rather than descriptive vs. generic) strikes me as right; but I just wanted to make the TM-geek observation that surnames are generally not treated as inherently distinctive.
Cheers and hope you are all well – Stacey
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