When does a trademark become generic?

By Debby Winters

When the public generally uses the name of a specific product as a generic term, it becomes a case of “genericide” – a killing of the trademark by becoming generic. That’s not good for the product because generic terms do not get any trademark protection.

The situation is not common, but it happens.  Common words have begun as trademarks but passed over into the world of unprotectable generic terms.  Examples include aspirinescalator, cellophanedry ice, flip phone, kerosene, thermos, trampoline, and videotape to name just a few.  For some of those, there are other words we could use for the product, but it’s easy to see why we prefer to call aspirin just “aspirin,” rather than “acetylsalicylic acid.”  For others, the term is so ingrained that it’s hard to think of what else we would call the product: what’s the alternative to “trampoline” as a springboard for jumping?

For obvious reasons, owners of dominant trademarks are not keen to have marks cross over the line to become generic terms.  When that happens, the formerly valuable mark, which only they could use on their product, becomes fair game for everybody to use.  That is why the owners of dominant marks often make efforts to “police” use of their marks, or at least to remind the public that it’s a trademark, not a generic term.

We used to see ads every so often reminding us that “Xerox” was a trademark, so you could ask someone to “make a photocopy” of a document, but you shouldn’t ask them to “xerox” it.   Other product names that have fought this battle include “Kleenex,” “Clorox,” “Gore-Tex” and “BoTox.” In addition to Google and its battle, Coke is undergoing the same dilemma. If I asked you whether you wanted a Coke and handed you a Pepsi, would you be surprised or be expecting it? Would you reply with “yes, I’ll take a Pepsi” thinking that Coke was the generic term? The world of generics can be tricky and the companies that own them don’t want people to confuse the trademark with all products or they lose that special protection.

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What’s a generic term? Can we google it to find out?

By Debby Winters

This story of generics began because David Elliott and Chris Gillespie registered over 700 domain names that contained the word “google” plus the names of companies, products, people, places, etc. For example, they registered “googledisney.com,” “googlefit.com,” and “googlemexicocity.com.”  Their argument in Arizona federal court was that, because people use “google” as a verb meaning “to perform an internet search,” thus making the mark generic.  Google objected to this and won. That’s when Elliott And Gillespie countered by trying to get Google’s registrations for the GOOGLE trademark cancelled saying that it has become a generic term by filing papers asking the Supreme Court to consider whether the term “Google” has become generic.Google’s response was that even if people use the term generically as a verb, that doesn’t mean that it is generic for search engines.  The federal trademark law allows a registration to be cancelled when the mark “becomes the generic name for the goods or services . . . for which it is registered,” but as Google pointed out, its registrations cover “computer hardware; computer software for creating indexes of information, indexes of web sites and indexes of other information resources” and other, longer descriptions.  The point is that the registrations cover providing a search engine, not the act of searching the internet.  Because all of Elliott And Gillespie’s evidence went to the use of “google” as a verb rather than the use as the name of the goods and services Google’s mark is registered for, Google argued that the evidence didn’t prove anything about the real question in the case.  The district court in Arizona agreed and dismissed the case, and the Court of Appeals for the Ninth Circuit affirmed the dismissal.On Aug 14, 2017 Elliott And Gillespie prepared their last shot by filing a petition for writ of certiorari at the U.S. Supreme Court.  It will be a while before we know anything about whether the Court will even take the case.  The Court denies most petitions without even requesting a response from the other party.  But if the Court is at least somewhat interested, it will ask Google to file a response, and then determine whether to take the case.  Even if the Court decides to hear the case, that’s no guarantee that Elliott and Gillespie will win.  There’s a long way to go before we ditch the term “search engine” and officially start referring to the act of searching as “google.” If you want to keep up with what happens next in this case, continue to read this blog or just “google it!”

DON’T BE FOOLED-The USPTO does NOT issue Invoices to trademark owners/applicants

By Debby Winters

Many trademark owners and applicants have fallen victim to the ever-growing problem of paying a fake or misleading invoice, which looks convincingly authentic and from the USPTO.  Not only do they look like they come from official government offices, they reference the particular trademark registration number and mark, hoping to cause further confusion. The companies sending these fake invoices use names like U.S. Trademark Compliance Office or the Patent and Trademark Bureau.  To help consumers, the USPTO keeps a list of fake invoice senders and welcomes reports of ones they don’t know about.

These fakes invoices claim to be for things like renewal fees, monitoring, customs recordation, or to place your mark in a database that turns out to be a fake database.  The invoices may contain tiny, fine print that explains what they are actually doing and that they are not part of the USPTO, but this is often overlooked.  More often, the fees are paid by unsuspecting folks who want to protect their trademarks.

The USPTO is making strides to educate people about these misleading invoices. If you use a trademark attorney to do your filings, all necessary filings and fees due to the USPTO will go through your attorney. If you do not use an attorney, check with one before you pay and get fooled.

 

National Ice Cream Day 2017

By Debby Winters

It is finally here! July 16, 2017!! Hip Hip Hooray! To help you celebrate National Ice Cream Day, here are a few tidbits about ice cream that you may not have already known

1- In 1984, President Ronald Reagan decreed that July would be National Ice Cream Month. And on the third Sunday of July—yes, that’s today—we celebrate National Ice Cream Day.

2- The sound of the ice cream truck is a trademarked sound: On May 21, 2013 the Australian company Breville received the trademark for the sound the ice cream truck makes, which they described as follows: The mark consists of the song “Turkey in the Straw”, which consists of a keyboard synthesizer playing pickup measure: G4 eighth note followed by F4 eighth note; first measure: E-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note followed by E-flat4 eighth note followed by B-flat3 eighth note followed by G3 eighth note followed by B-flat3 eighth note, played simultaneously with E-flat3 half note followed by B-flat2 half note; second measure: E-flat 4 eighth note followed by C5 eighth note followed by B-flat4 eighth note followed by G4 eighth note followed by B-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note, played simultaneously with E-flat3 half note followed by B-flat 2 half note; third measure: G4 quarter note followed by G4 quarter note followed by G4 eighth note followed by F4 eighth note followed by E-flat 4 eighth note followed by F4 eighth note, played simultaneously with E-flat3 half note followed by B-flat 2 half note; fourth measure: G4 quarter note followed by F4 quarter note followed by F4 quarter note followed by G4 eighth note followed by F4 eighth note, played simultaneously with B-flat2 half note followed by F3 half note; fifth measure: E-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note followed by E-flat4 eighth note followed by B-flat3 eighth note followed G3 eighth note followed by B-flat3 eighth note, played simultaneously with E-flat3 half note followed by B-flat2 half note; sixth measure: E-flat4 eighth note followed by C5 eighth note followed by B-flat4 eighth note followed by G4 eighth note followed by B-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note, played simultaneously with E-flat3 half note followed by B-flat2 half note; seventh measure: G4 eighth note followed by B-flat4 eighth note followed by eighth rest followed by C5 eighth note followed by B-flat4 eighth note followed by G4 eighth note followed by E-flat4 eighth note followed by F4 eighth note, played simultaneously with B-flat2 quarter note followed G3 quarter note followed by B-flat3 half note; eighth measure: G4 quarter note followed by F4 quarter note followed by E-flat4 quarter note followed by quarter rest, played simultaneously with B-flat2 half note followed by E-flat2 half note.

3- Around 1832, Augustus Jackson created multiple ice cream recipes and pioneering a superior ice cream preparation technique and decoration.

4- Nancy Johnson of Philadelphia created the hand-cranked device that was the first ice cream machine in 1843. This revolutionizing the distribution and sale of ice cream throughout the United States and Canada.   It was a manual device cranked by a handle with a pewter cylinder.  Her invention, as illustrated in her patent no. 3,254 looked like the diagram below and was described as: An outer wooden pail contained crushed ice; an inner tin or pewter cylinder contained the ice-cream mix to be frozen.  A manual device cranked by a handle with a lid bolted on and the handle inserted through the top of the lid and turned to freeze the mix. The device inside attached to the handle was called a dasher. It was possible to split the inner cylinder such that 2 different ice cream flavours could be frozen simultaneously but separately.

5- Syrian immigrant and waffle salesman Ernest Hamwi has generally been credited with inventing the first edible ice cream cone at the 1904 St. Louis World’s Fair when a nearby vendor ran out of serving dishes, and the creation sparked a nationwide sensation.

6- Philadelphian entrepreneur by the name of Robert Green would regularly mix syrup and cream into his carbonated beverages in the last decades of the 1800s. Legend has it that on one fateful day, he ran out of these regular ingredients and used ice cream as a substitute, creating the first ice cream soda in the process.

7- The Oregon Research Institute in Eugene and published a study in the American Journal of Clinical Nutrition that found that when the brain craves ice cream and other high-fat/high-sugar foods, it reacts in the same way as a cocaine user’s does in a period of withdrawal.

8- In 2012, after an exhaustive survey of regional credit card transactions throughout the nation, researchers found that “Long Beachers eat ice cream a whopping 268 percent more than the average American.” Fort Worth and Dallas also scored well above average when it comes to devouring ice cream.

9- Prior to the invention of refrigeration, ice cream was a rather expensive dessert. Our nation’s first president is rumored to have once spent $700 on the delicacy in New York City over the course of one summer. Sharing her husband’s zeal, Martha Washington acquired a “cream machine for ice” in 1784 to serve ice cream to her guests at Mount Vernon.

10- Ben And Jerry wanted to buy a bagel machine but could only afford an ice cream maker, thus was born their famous ice cream.

Go get yourself some ice cream! Happy National Ice Cream Day 2017!

Devil Horns Gesture Trademarkable?

By Debby Winters

In the past few months, Gene Simmons, of the famed rock n roll band Kiss, has applied for a number of trademark applications.  Simmons, one of the most successful musician-entrepreneurs in history, owns a number of other trademark registrations through his Gene Simmons Company.  The most notable of his recent filings is for the hand gesture shown below. This application was filed June 9, 2017 claiming it was for live performances by a musical artist; personal appearances by a musical artist, which has first been used in 1974 .  Simmons claimed that it became a part of the band’s act during its Hotter Than Hell tour — on Nov. 14, 1974 to be exact.

Mark Image

At the time of the filing, it was controversial as to whether Simmons was the owner of the hand gesture, as it is not only an international symbol of rock, but a perusal of photographs that predate 1974 show other rock stars using the gesture.  This is now a moot point as on June 20, 2017,  less than 2 weeks after the filing, Simmons filed an express abandonment of the mark.  It appears that he sought registration of the hand gesture itself, rather than an image or depiction of the gesture, describing the mark in the application as “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular.”  While images or stylized drawings of hand gestures can function, and be registered as trademarks, either by themselves or as part of a design mark, hand gestures in and of themselves cannot function as trademarks.

Even if they could be registered as a trademark, how would one enforce such a thing against others?  That would be virtually impossible.

Nice try, Gene, but no go.

The Slants fought the law and The Slants won!

By Debby Winters

Should an all Asian-American rock band have the right to call themselves by what the U.S. Patent and Trademark Office termed a disparaging name? The US Supreme Court says yes. The Slants fought the law and The Slants won!

The recent Supreme Court ruling could have broad impact on how the First Amendment is applied in other trademark cases.  The USPTO initially kept the band from registering its name, The Slants, and then rejected its appeal, citing the Lanham Act, which prohibits any trademark that could “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”  A Federal Court sided with the band and the USPTO sued to avoid being compelled to register the name as a trademark. The Supreme Court has now weighted in and has sided with The Slants.

You may be asking why the band wanted the name in the first place. “We grew up and the notion of having slanted eyes was always considered a negative thing,” Simon Tam, the band leader, said.  “Kids would pull their eyes back in a slant-eyed gesture to make fun of us. … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.” This attitude is in contrast to the Native Americans, who in 2014, asked the USPTO to cancel the registrations for the Washington Redskins because the Native Americans considered the name offensive.

This decision may lead to more marks the USPTO terms “scandalous” to ruling that allow the marks based on First Amendment grounds.  And if so, will this mean a short-term run on the Trademark Office to register offensive trademarks while you may be able to get them through?  Applications that have been rejected on the basis of Section 2(a) may have a new life for those who use or intend to use the marks in commerce. Only time will tell. Stay tuned!

 

Trademark and Wine/Beer end of the year update for 2016

By Debby Winters

For the past two years I have reported on a blog post by the folks at “Trademark & Copyright Law” in which they discussed the year in terms of two important things: Trademarks and Adult Beverages. The 2016 Guide is now out.

Notable among the cases mentioned is the one about the ATLAS BEER battle between Chicago and DC from 2015.  It seems as though the Chicago Atlas changed its name to BURNT CITY Brewing. 

There’s also a dispute between Bad Spaniel and Jack Daniels where the bottles look remarkably similar but the court held that the bottle trade dress and design are non-functional.

Take a look at the list and see if you recognize anything. Let me know if you find these trademarks confusing or infringing! At least, after looking at the list, you will have some talking points for your next holiday party, as I bet most of your friends are not as savvy when it comes to Trademarks and Adult Beverages as you’ll be after going through this list!

Here’s to Trademarks and Adult Beverages!

Happy Holidays 2016!