When a trademark becomes very popular and well-known, it risks becoming "genericized" where it is no longer recognized as a brand but rather as a common term to refer to a class of products. Some examples of trademarks that became generic include Escalator, Aspirin, and Heroin. Trademark owners must aggressively protect their marks through legal action against any infringing uses to avoid losing their intellectual property rights if the mark becomes genericized. Google has so far avoided this fate, while companies like Xerox have faced challenges preventing the generic use of their trademarks despite campaigns. Maintaining a trademark requires continuous legal policing to ensure it remains a protected brand and does not slip into generic status.
Freehand Profit is a Los Angeles based artist who creates custom masks from sneakers to explore issues of identity, consumerism, and modern culture. This issue of Shoez magazine features Freehand Profit's custom Air Jordan 3 mask, as well as articles on a 1970 Chevelle SS with custom paint and rims, the re-release of the Nike Air Max 95 in Bright Crimson, and New Balance's continued success with the 574 model. The magazine also includes features on custom motorcycles by John Shope and cars sponsored by Forgiato wheels.
The article discusses why companies come up with good, bad, and terrible names for products and brands. It provides examples like Kodak, which Eastman named using anagrams, and how naming has become more complex today due to the large number of existing trademarks. While an original, memorable name can help build a brand, names can also damage products if chosen poorly, as shown by examples like Reebok's "Incubus" shoe. The cost of professional naming has risen with greater competition and globalization. Overall, the article examines the challenges of naming products today and importance of choosing names strategically.
This document provides information about trademarks, including what they are, common types of trademarks, trademark rights, and the process of trademark generification where a trademark becomes a generic term. It discusses how generification can diminish trademark rights and shares examples of trademarks that became generic names. Strategies are presented for trademark owners to prevent generification, like educating partners on proper usage and using brand descriptors. Famous brand examples like Coca-Cola and their trademark protection efforts are also examined.
The document discusses the concept of genericide, which is when a brand name becomes so commonly used that it loses its legal protection as a trademark. It provides examples of former trademarks like aspirin, cellophane, and thermos that are now used as common nouns. The document then lists other current brand names and asks the reader to determine if they have become generic or still have trademark protection. It concludes by providing a hypothetical scenario using many of these terms without trademark symbols to determine if they have achieved genericide status.
Disney may face trademark infringement liability for its Alice Through the Looking Glass movie merchandise, despite the copyright on the original Lewis Carroll novel being in the public domain. While the copyright expired long ago, the London retailer "Alice through the Looking Glass" owns valid US trademark registrations covering retail services, printed materials, games, apparel, and jewelry using the ALICE THROUGH THE LOOKING GLASS mark. As a result, Disney could be found to infringe these trademarks if its movie-related uses are deemed confusingly similar. Companies adapting public domain works still need to consider existing trademark rights when developing related goods and services.
The document discusses 5 characteristics of great company names:
1) A great name should be original and communicate enthusiasm for the business. Some companies have changed their names when a better idea came.
2) A great name should be "sticky" and easily remembered without needing to refer to a list of names.
3) Many successful companies have short, 2-syllable names that are punchy and memorable like Nike, Apple, Facebook, and Twitter.
4) A name should be functional and relate to the company's product or service, like how Mozilla was named to describe Marc Andreessen's new web browser project.
5) Some names are inspired and tell a story, like Caterpillar
Global branding involves creating a consistent brand experience and image around a name worldwide. A global brand is perceived to reflect the same set of values globally, even when products are produced locally. Name evaluation assesses potential brand names to avoid negative connotations and ensure easy pronunciation in target markets. It involves surveying linguists in different countries on proposed names. Issues like pronunciation, meaning, and regulations must be considered to avoid problems when launching a brand globally. Localization companies are well-positioned to provide global branding and name evaluation services as a complementary offering.
Freehand Profit is a Los Angeles based artist who creates custom masks from sneakers to explore issues of identity, consumerism, and modern culture. This issue of Shoez magazine features Freehand Profit's custom Air Jordan 3 mask, as well as articles on a 1970 Chevelle SS with custom paint and rims, the re-release of the Nike Air Max 95 in Bright Crimson, and New Balance's continued success with the 574 model. The magazine also includes features on custom motorcycles by John Shope and cars sponsored by Forgiato wheels.
The article discusses why companies come up with good, bad, and terrible names for products and brands. It provides examples like Kodak, which Eastman named using anagrams, and how naming has become more complex today due to the large number of existing trademarks. While an original, memorable name can help build a brand, names can also damage products if chosen poorly, as shown by examples like Reebok's "Incubus" shoe. The cost of professional naming has risen with greater competition and globalization. Overall, the article examines the challenges of naming products today and importance of choosing names strategically.
This document provides information about trademarks, including what they are, common types of trademarks, trademark rights, and the process of trademark generification where a trademark becomes a generic term. It discusses how generification can diminish trademark rights and shares examples of trademarks that became generic names. Strategies are presented for trademark owners to prevent generification, like educating partners on proper usage and using brand descriptors. Famous brand examples like Coca-Cola and their trademark protection efforts are also examined.
The document discusses the concept of genericide, which is when a brand name becomes so commonly used that it loses its legal protection as a trademark. It provides examples of former trademarks like aspirin, cellophane, and thermos that are now used as common nouns. The document then lists other current brand names and asks the reader to determine if they have become generic or still have trademark protection. It concludes by providing a hypothetical scenario using many of these terms without trademark symbols to determine if they have achieved genericide status.
Disney may face trademark infringement liability for its Alice Through the Looking Glass movie merchandise, despite the copyright on the original Lewis Carroll novel being in the public domain. While the copyright expired long ago, the London retailer "Alice through the Looking Glass" owns valid US trademark registrations covering retail services, printed materials, games, apparel, and jewelry using the ALICE THROUGH THE LOOKING GLASS mark. As a result, Disney could be found to infringe these trademarks if its movie-related uses are deemed confusingly similar. Companies adapting public domain works still need to consider existing trademark rights when developing related goods and services.
The document discusses 5 characteristics of great company names:
1) A great name should be original and communicate enthusiasm for the business. Some companies have changed their names when a better idea came.
2) A great name should be "sticky" and easily remembered without needing to refer to a list of names.
3) Many successful companies have short, 2-syllable names that are punchy and memorable like Nike, Apple, Facebook, and Twitter.
4) A name should be functional and relate to the company's product or service, like how Mozilla was named to describe Marc Andreessen's new web browser project.
5) Some names are inspired and tell a story, like Caterpillar
Global branding involves creating a consistent brand experience and image around a name worldwide. A global brand is perceived to reflect the same set of values globally, even when products are produced locally. Name evaluation assesses potential brand names to avoid negative connotations and ensure easy pronunciation in target markets. It involves surveying linguists in different countries on proposed names. Issues like pronunciation, meaning, and regulations must be considered to avoid problems when launching a brand globally. Localization companies are well-positioned to provide global branding and name evaluation services as a complementary offering.
The panel affirmed the district court's summary judgment in favor of Google in a lawsuit seeking cancellation of Google's trademark on the ground that it is generic. The panel held that a claim of genericness must be made with regard to a particular good or service, such as internet search engines rather than the broad concept of internet searching. The panel also held that verb use of the word "google" did not automatically constitute generic use. The panel affirmed the district court's finding that the plaintiffs did not provide sufficient evidence that the primary significance of the word "google" to the relevant public was as a generic term for internet search engines rather than as a trademark identifying Google's search engine.
This document discusses the exploitation and protection of an individual's "image" or personality rights. It begins by explaining how an individual's image can have commercial value through endorsement deals, merchandise, and becoming a brand like David Beckham. UK law has taken steps to protect individual privacy through causes of action for unauthorized use of photos. The document also examines how image rights have emerged and been tested in cases like Douglas v Hello, with celebrities able to claim damages for interference with commercial exploitation of their image. Other means of protecting image discussed include trademarks, passing off, copyright, and performers' rights. The document concludes by providing practical advice for protecting image through documentation, branding, registering rights, licensing, and protecting online reputation.
This assignment is based on Legal concept the assignment covers the Intellectual Property Act 36 of 2003, and other concept relates to the unfair competition and Admissibility of a mark.
We have selected the Spirits of Srilanka to apply the theory which would make the assignment easier to understand and more users friendly.
The document discusses important lessons about protecting brand names in China. It provides examples of brands that succeeded and failed at selecting distinctive Chinese names. Starbucks succeeded by registering its Chinese name early, while Pfizer lost control of its brand "Viagra" due to its late and non-distinctive Chinese registration of "Wan Aike". The document emphasizes that brands must register Chinese trademarks as early as the Western launch to control their brand image in China and avoid genericization. Selecting a meaningful, positive Chinese name is also important to maximize brand recognition.
Global Branding Name Evaluation Talia BaruchTalia Baruch
Global branding and name evaluation are important considerations for companies expanding internationally. A global brand aims to convey consistent values worldwide while allowing for local production. Name evaluation assesses potential names for pronunciation, connotations, and regulatory issues in different languages and cultures. It identifies strengths and weaknesses through linguist surveys and alternative suggestions. Common pitfalls include unintended meanings, negative associations, or confusing pronunciations. Careful evaluation helps brands avoid issues and connect with global audiences appropriately. Localization companies are well-positioned to provide both translation and name evaluation services as a one-stop-shop for companies expanding abroad.
Trademark infringement occurs when a similar trademark causes consumer confusion between brands. Three famous trademark infringement cases are discussed. In Apple v. Samsung, Apple claimed Samsung copied iPhone design but the Supreme Court ruled damages should be based on specific components copied, not the entire product. In Google v. Oracle, the Supreme Court ruled Google's use of Java APIs in Android was fair use. In Monster Energy v. Monster.com, the court ruled the brands operated in different industries so there was minimal likelihood of confusion. Lessons from these cases include the importance of early trademark registration, swift action against infringement, understanding what elements can be protected, and being mindful of fair use defenses.
The document discusses intellectual property and trademarks. It defines intellectual property as property that arises from human intellect, such as ideas, designs, poems, and music. It notes that intellectual property rights protect inventions and creations by preventing unauthorized copying. The key types of intellectual property discussed are patents, copyrights, and trademarks. Patents protect inventions, copyrights protect original creative works, and trademarks distinguish the source of goods and services. The document outlines the trademark registration process in India and criteria for determining if a trademark is valid.
PELTON PowerPoint: ABA Cyberspace Institute 2011-01-28erikpelton
"Trademark Strategies for 2012" Presentation to the American Bar Association's Cyberspace Institute in Austin Texas on January 28, 2011. The presentation explores recent changes to the practice of trademark law, and what the future might hold for trademark owners and attorneys who advise them.
Intellectual Property Issues in International CommerceHawley Troxell
This document discusses intellectual property issues related to international commerce. It begins by providing hypothetical scenarios about a company selling a patented mousetrap and trademark infringement across borders. It then defines various types of intellectual property including patents, trademarks, domain names, copyrights and trade secrets. The bulk of the document focuses on trademarks and domain names, explaining what they are, different types of trademark protection, how to search trademarks, and advantages to federal trademark registration. It emphasizes the importance of protecting intellectual property in the US first and searching other jurisdictions before commerce. It also covers international considerations regarding trademarks, domain names, and other issues like licensing, piracy, and international agreements.
9 Nasty Trademark Infringement Cases and How To Avoid Them!Nicholas Potts
Every organization wants to avoid a costly, lengthy, and resource-intensive lawsuit for trademark infringement. Experts estimate the average cost of a trademark lawsuit can be between $120,000 to $750,000 in addition to years of valuable time. We'll review nine recent, nasty trademark fights, many of which involve brands you're familiar with. We'll also share some insight on where one or more parties could have taken steps to avoid the issue.
A trademark is a type of intellectual property that distinguishes the source of goods and services through names, words, designs or other identifiers. Trademarks can be registered under classes such as chemicals, machines or medical instruments. There were several famous trademark disputes including between Apple Corps and Apple Computer over the Apple name, which was finally settled in 2007 when Apple bought the trademark rights. Another case was between the environmental group WWF and the World Wrestling Federation over the initials WWF, which resulted in the wrestling group changing its name to WWE.
This document provides an overview of intellectual property and intellectual property rights. It defines intellectual property as property that arises from human intellect, such as ideas, designs, poems, and music. Intellectual property rights protect the inventions and creations of individuals and provide the inventor exclusivity over their intellectual property. The three main types of intellectual property rights discussed are patents, copyrights, and trademarks. Patents protect inventions, copyrights protect original creative works, and trademarks protect brands, logos, and names. The document outlines the registration process and legal protections provided for each type of intellectual property right.
1) The document describes a business quiz competition hosted by Conquiztadors called Biz-Tech Quiz EL-DORADO'22. It consists of 25 multiple choice questions across various business and technology topics.
2) Some of the questions cover topics like dating apps, marketing campaigns, industries, movies/documentaries, controversies and more. For example, one question identifies the Agra shoe industry and the documentary about its struggles called "In Their Shoes".
3) The rules state there are no negatives, some questions marked with a star will be used to resolve ties, and using unfair means will lead to disqualification. The quiz aims to test the participants' knowledge of current events, business
A synopsis of marketing and business practice in the 21st Century within Virt...Will Burns
Completed presentation for vBusiness Link to be used on June 23rd at the grand opening of vBusiness Link in SecondLife. This presentation is the downloadable version for our audience.
Cyber squatting refers to registering domain names that are identical or similar to existing trademarks with the intent of profiting from their goodwill. It became an issue in the 1990s when some individuals began registering famous company or brand names as domains in hopes of reselling them. While early squatters tried to sell domains back to trademark owners, they eventually began using domains to divert traffic to their own sites. This required new laws beyond traditional trademark protection. The US was first to pass an anti-cybersquatting law in 1999 allowing trademark owners to take legal action against bad faith registrations or uses of domains confusingly similar to their marks. Other countries addressed squatting through national laws and existing trademark directives.
Intellectual property refers to creations of the mind like inventions, literary and artistic works, designs, names and symbols. It is divided into two branches: industrial property like patents, trademarks and designs, and copyright for creative works. The main purpose of intellectual property law is to encourage innovation by granting limited monopoly rights to creators and inventors. There are several types of intellectual property including patents for inventions, copyrights for creative works, trademarks for distinguishing business sources, and geographical indications for goods linked to their place of origin. Intellectual property laws aim to promote creativity while allowing for fair use of creations.
The document discusses various trivia questions related to companies, products, people, and events. It describes companies like Intel and Swatch, products like Ferrari's Dino model and the Toblerone chocolate bar, and groups like the famous Bollywood actors club. It also mentions landmarks like the Indira Gandhi Indoor Stadium and structures like Fort Knox.
This document discusses various intellectual property protections that are important for businesses, including patents, copyrights, trademarks, and trade secrets. Patents provide a legal monopoly for new inventions or processes and last between 14-20 years depending on the type of patent. Copyrights protect original creative works. Trademarks protect brands, names, logos and other distinctive signs used by businesses. Trade secrets provide protection for confidential business information. The document emphasizes that intellectual property laws help protect businesses from theft of their ideas, brands and property.
The panel affirmed the district court's summary judgment in favor of Google in a lawsuit seeking cancellation of Google's trademark on the ground that it is generic. The panel held that a claim of genericness must be made with regard to a particular good or service, such as internet search engines rather than the broad concept of internet searching. The panel also held that verb use of the word "google" did not automatically constitute generic use. The panel affirmed the district court's finding that the plaintiffs did not provide sufficient evidence that the primary significance of the word "google" to the relevant public was as a generic term for internet search engines rather than as a trademark identifying Google's search engine.
This document discusses the exploitation and protection of an individual's "image" or personality rights. It begins by explaining how an individual's image can have commercial value through endorsement deals, merchandise, and becoming a brand like David Beckham. UK law has taken steps to protect individual privacy through causes of action for unauthorized use of photos. The document also examines how image rights have emerged and been tested in cases like Douglas v Hello, with celebrities able to claim damages for interference with commercial exploitation of their image. Other means of protecting image discussed include trademarks, passing off, copyright, and performers' rights. The document concludes by providing practical advice for protecting image through documentation, branding, registering rights, licensing, and protecting online reputation.
This assignment is based on Legal concept the assignment covers the Intellectual Property Act 36 of 2003, and other concept relates to the unfair competition and Admissibility of a mark.
We have selected the Spirits of Srilanka to apply the theory which would make the assignment easier to understand and more users friendly.
The document discusses important lessons about protecting brand names in China. It provides examples of brands that succeeded and failed at selecting distinctive Chinese names. Starbucks succeeded by registering its Chinese name early, while Pfizer lost control of its brand "Viagra" due to its late and non-distinctive Chinese registration of "Wan Aike". The document emphasizes that brands must register Chinese trademarks as early as the Western launch to control their brand image in China and avoid genericization. Selecting a meaningful, positive Chinese name is also important to maximize brand recognition.
Global Branding Name Evaluation Talia BaruchTalia Baruch
Global branding and name evaluation are important considerations for companies expanding internationally. A global brand aims to convey consistent values worldwide while allowing for local production. Name evaluation assesses potential names for pronunciation, connotations, and regulatory issues in different languages and cultures. It identifies strengths and weaknesses through linguist surveys and alternative suggestions. Common pitfalls include unintended meanings, negative associations, or confusing pronunciations. Careful evaluation helps brands avoid issues and connect with global audiences appropriately. Localization companies are well-positioned to provide both translation and name evaluation services as a one-stop-shop for companies expanding abroad.
Trademark infringement occurs when a similar trademark causes consumer confusion between brands. Three famous trademark infringement cases are discussed. In Apple v. Samsung, Apple claimed Samsung copied iPhone design but the Supreme Court ruled damages should be based on specific components copied, not the entire product. In Google v. Oracle, the Supreme Court ruled Google's use of Java APIs in Android was fair use. In Monster Energy v. Monster.com, the court ruled the brands operated in different industries so there was minimal likelihood of confusion. Lessons from these cases include the importance of early trademark registration, swift action against infringement, understanding what elements can be protected, and being mindful of fair use defenses.
The document discusses intellectual property and trademarks. It defines intellectual property as property that arises from human intellect, such as ideas, designs, poems, and music. It notes that intellectual property rights protect inventions and creations by preventing unauthorized copying. The key types of intellectual property discussed are patents, copyrights, and trademarks. Patents protect inventions, copyrights protect original creative works, and trademarks distinguish the source of goods and services. The document outlines the trademark registration process in India and criteria for determining if a trademark is valid.
PELTON PowerPoint: ABA Cyberspace Institute 2011-01-28erikpelton
"Trademark Strategies for 2012" Presentation to the American Bar Association's Cyberspace Institute in Austin Texas on January 28, 2011. The presentation explores recent changes to the practice of trademark law, and what the future might hold for trademark owners and attorneys who advise them.
Intellectual Property Issues in International CommerceHawley Troxell
This document discusses intellectual property issues related to international commerce. It begins by providing hypothetical scenarios about a company selling a patented mousetrap and trademark infringement across borders. It then defines various types of intellectual property including patents, trademarks, domain names, copyrights and trade secrets. The bulk of the document focuses on trademarks and domain names, explaining what they are, different types of trademark protection, how to search trademarks, and advantages to federal trademark registration. It emphasizes the importance of protecting intellectual property in the US first and searching other jurisdictions before commerce. It also covers international considerations regarding trademarks, domain names, and other issues like licensing, piracy, and international agreements.
9 Nasty Trademark Infringement Cases and How To Avoid Them!Nicholas Potts
Every organization wants to avoid a costly, lengthy, and resource-intensive lawsuit for trademark infringement. Experts estimate the average cost of a trademark lawsuit can be between $120,000 to $750,000 in addition to years of valuable time. We'll review nine recent, nasty trademark fights, many of which involve brands you're familiar with. We'll also share some insight on where one or more parties could have taken steps to avoid the issue.
A trademark is a type of intellectual property that distinguishes the source of goods and services through names, words, designs or other identifiers. Trademarks can be registered under classes such as chemicals, machines or medical instruments. There were several famous trademark disputes including between Apple Corps and Apple Computer over the Apple name, which was finally settled in 2007 when Apple bought the trademark rights. Another case was between the environmental group WWF and the World Wrestling Federation over the initials WWF, which resulted in the wrestling group changing its name to WWE.
This document provides an overview of intellectual property and intellectual property rights. It defines intellectual property as property that arises from human intellect, such as ideas, designs, poems, and music. Intellectual property rights protect the inventions and creations of individuals and provide the inventor exclusivity over their intellectual property. The three main types of intellectual property rights discussed are patents, copyrights, and trademarks. Patents protect inventions, copyrights protect original creative works, and trademarks protect brands, logos, and names. The document outlines the registration process and legal protections provided for each type of intellectual property right.
1) The document describes a business quiz competition hosted by Conquiztadors called Biz-Tech Quiz EL-DORADO'22. It consists of 25 multiple choice questions across various business and technology topics.
2) Some of the questions cover topics like dating apps, marketing campaigns, industries, movies/documentaries, controversies and more. For example, one question identifies the Agra shoe industry and the documentary about its struggles called "In Their Shoes".
3) The rules state there are no negatives, some questions marked with a star will be used to resolve ties, and using unfair means will lead to disqualification. The quiz aims to test the participants' knowledge of current events, business
A synopsis of marketing and business practice in the 21st Century within Virt...Will Burns
Completed presentation for vBusiness Link to be used on June 23rd at the grand opening of vBusiness Link in SecondLife. This presentation is the downloadable version for our audience.
Cyber squatting refers to registering domain names that are identical or similar to existing trademarks with the intent of profiting from their goodwill. It became an issue in the 1990s when some individuals began registering famous company or brand names as domains in hopes of reselling them. While early squatters tried to sell domains back to trademark owners, they eventually began using domains to divert traffic to their own sites. This required new laws beyond traditional trademark protection. The US was first to pass an anti-cybersquatting law in 1999 allowing trademark owners to take legal action against bad faith registrations or uses of domains confusingly similar to their marks. Other countries addressed squatting through national laws and existing trademark directives.
Intellectual property refers to creations of the mind like inventions, literary and artistic works, designs, names and symbols. It is divided into two branches: industrial property like patents, trademarks and designs, and copyright for creative works. The main purpose of intellectual property law is to encourage innovation by granting limited monopoly rights to creators and inventors. There are several types of intellectual property including patents for inventions, copyrights for creative works, trademarks for distinguishing business sources, and geographical indications for goods linked to their place of origin. Intellectual property laws aim to promote creativity while allowing for fair use of creations.
The document discusses various trivia questions related to companies, products, people, and events. It describes companies like Intel and Swatch, products like Ferrari's Dino model and the Toblerone chocolate bar, and groups like the famous Bollywood actors club. It also mentions landmarks like the Indira Gandhi Indoor Stadium and structures like Fort Knox.
This document discusses various intellectual property protections that are important for businesses, including patents, copyrights, trademarks, and trade secrets. Patents provide a legal monopoly for new inventions or processes and last between 14-20 years depending on the type of patent. Copyrights protect original creative works. Trademarks protect brands, names, logos and other distinctive signs used by businesses. Trade secrets provide protection for confidential business information. The document emphasizes that intellectual property laws help protect businesses from theft of their ideas, brands and property.
1. www.ipera.in | Oct-Nov 2014 | IP Era 21
trademark
Only after immense effort and days of brainstorming does
a creative team arrive at a substantial brand name. It
then puts all its might behind making it famous and well-
known and voila one day, it becomes a household name. A
marketing success or a legal failure?
The saying “Familiarity breeds contempt” could not be
more true than in the case of generic trademarks. A unique
trademark tends to get genericized and loses its uniqueness
when people get too familiar with it. It becomes a common
term for that genus rather than a term for a species within
that genus and when this happens, it slips from its protected
status and enters the public domain. A trademark thus
popularised has its legal protection at risk, as its intellectual
property rights may be lost and competitors are enabled to
use the genericized trademark to describe similar products.
The process by which trademark rights are diminished or
lost as a result of common use in the market place is known
as genericization. This process typically occurs over a period
of time in which a mark is not used as a trademark (i.e.,
where it is not used to exclusively identify the products
or services of a particular business), where a mark falls
into disuse entirely, or where the trademark owner does
not enforce its rights through actions for passing off or
trademark infringement.
This is a fate that Xerox fears and is trying to avoid by
aggressive campaigns and this is a fate that Google escaped.
Yet this fate has engulfed many – Escalator, Aspirin,
Heroin…
The case of Escalator
We routinely use escalators. But did you know it was once a
brand name and not a noun to describe moving staircases?
Escalator inventor Charles Seeberger sold the trademark
name rights to the Otis Elevator Company in 1910. In 1950,
the landmark case Haughton Elevator Co. v. Seeberger
saw the end of Otis’s reign over exclusive use of the
word “escalator.” The Assistant Commissioner of Patents
Murphy’s decision rejected the Otis Elevator Company’s
appeal to keep their trademark intact, and noted that “the
Does genericization of
lead to the fall of brands?
Trademarks
When a trademark gets popularized in the marketplace, its legal protection is at risk as the
intellectual property rights in the trademark may be lost and competitors may be spurred to
use the genericized trademark to describe similar products
By Fatima Ansari
term ‘escalator’ is recognized by the general public as the
name for a moving stairway and not the source thereof”,
observing that the Otis Elevator Co. had “used the term as
a generic descriptive term…in a number of patents which
[had] been issued to them and…in their advertising matter.”
As the company itself made the mistake of using escalator
as a descriptive term and not a brand name, all trademark
protections were removed from the word “escalator” and the
term was officially genericized, and it fell into the public
domain.
The case of Xerox
Xerox is another classic case of genericization. Many may
not even know that it is a brand! The word “xerox” is used
as a synonym for “photocopy” (both as a noun and a verb)
in many areas people generally say “Can you Xerox these
documents for me?” However, the company was not to be
daunted and opted for a very aggressive ad campaign to
educate the public. A 2003 ad even lamented, “When you
use ‘Xerox’ the way you use ‘aspirin,’ we get a headache.
Yet, despite their efforts, many dictionaries continue to
include the use of “xerox” as a verb, including the Oxford
English Dictionary.
The case of Google
Google came in our lives in 1998 and then changed the way
we lived. We began to search for everything on its search
engine and without knowing it soon enough, ‘to google’
became a verb synonymous with web searching. Yet, Google
escaped the fate of being genericized as even today when
people say, ‘I am going to google’ they mean ‘I am going
to google on Google.’ They don’t say I am going to google
and then go to Yahoo! But when they say I am having
an aspirin, they may be referring to any aspirin made by
various pharma companies.
Recently, in Elliott v. Google, a federal court in Arizona held
that despite the public’s use of the word “googling” to mean
“searching on the Internet,” the “Google” word mark still
functions in the minds of consumers primarily to identify
2. www.ipera.in | Oct-Nov 2014 | IP Era22
trademark
Verb use of a
trademark is not
fundamentally
incapable of
identifying a producer
or denoting source.
A mark can be
used as a verb in a
discriminate sense
so as to refer to
an activity with a
particular product or
service
Disclaimer – The views expressed in this article are the personal views of
the author and are purely informative in nature.
Google- the Internet company, as the source of the search
service associated with the “Google” mark. The plaintiff in
the case argued that the public’s use of a trademark as a
verb necessarily signifies that the mark has become generic.
The court disagreed and noted as
follows:
The verb use of a trademark is not fundamentally incapable
of identifying a producer or denoting source. A mark can
be used as a verb in a discriminate sense so as to refer to
an activity with a particular product or service, e.g., “I will
PHOTOSHOP the image” could mean the act of manipulating
an image by using the trademarked Photoshop graphics
editing software developed and sold by Adobe Systems.
This discriminate mark-as-verb usage clearly performs the
statutory source-denoting function of a trademark.
The court went on to explain that a problem arises for a mark
owner only if mark-as-verb usage is indiscriminate, and the
mark becomes referentially unmoored in the public’s mind
from the mark owner’s product or service.
Avoiding the slip into the generic void
– Lessons from Godzilla
Toho Co. Ltd, the owner of Godzilla and related marks has
aggressively and continuously gone after many infringers
to protect the name ‘Godzilla’. They have ensured that
Godzilla does not become synonymous with any fire
breathing dinosaur, but remains exclusively recognized as
their Godzilla, their trademarked brand. In 1977, the rock
band Blue Oyster Cult paid an undisclosed licensing fee to
use Godzilla’s copyrighted roar in its hit song, “Godzilla.”
In 1985, Warner Bros. depicted Godzilla in a chase scene
in Tim Burton’s Pee Wee’s Big Adventure. The Hollywood
studio was sued by Toho and had to pay an undisclosed
amount. In 1991 the U.S. division of Honda Motor displayed
a Godzilla float in the Rose Parade, and paid an undisclosed
amount to settle a lawsuit. In 2001, Rawkus Entertainment
had to discontinue PharoaheMonch’s rap hit, “Simon Says,”
after Toho accused the rapper of sampling Godzilla theme
music without permission. In 2002 a wine called “Cabzilla”
whose bottle bore the label of a screeching Godzilla toting
a glass of red was forced off the market in a discreet
settlement between the owners and Toho. In 2003 Yankee
Stadium vendors were found hawking Godzilla wares and
were dealt with by the Toho brigade. In 2008 Arizona rock
band Asshole Godzilla was ordered to forfeit its internet
domain and stop using Godzilla in its name. Again in
2008, Toho filed a lawsuit against Subway for using the
Godzilla mark without permission, demanding $150,000
in compensation. The sandwich chain had depicted a giant
monster in a commercial for a Five Dollar Footlong sandwich
promotion. In 2011 Toho sued Honda for depicting a fire-
breathing monster in a commercial for the Honda Odyssey.
The monster was never mentioned by name, being seen
briefly on a video screen inside the minivan. In 2011, the
Sea Shepherd Conservation Society christened a vessel
Gojira. The Gojira was renamed MV Brigitte Bardot in May
2011 due to legal pressure from Toho.
Up till now Godzilla has faced only one defeat in a copyright
infringement suit. In 1981 a federal appeals court dismissed
a lawsuit by Toho against Sears Roebuck & Co. filed over
a line of trash bags the retailer had named “Bagzilla.”
The bag’s use of a Godzilla-esque creature represented a
“humorous caricature” and not a serious threat to Toho’s
business interests, the court ruled. The San Francisco-
based 9th U.S. Circuit Court of Appeals court ruled that
Toho’s claims of infringement and trademark dilution were
“implausible.” Sears, the court found, “means only to make
a pun.”
Yet, Godzilla continues its rampage…
The same defence was resorted to yet again by a Louisiana
brewer that produced a beer called Mechahopzilla, featuring
a giant robot lizard on the can that perhaps too closely
resembled Godzilla’s mechanized rival Mechagodzilla.
However, this time the dinosaur was unbeatable. The brewer
succumbed to its might and agreed upon a settlement.
For a trademark owner, one of the requirements is to
regularly and meticulously police their mark to ensure that
it does not become generic. A little laxity and the trademark
may get devalued and become hard to enforce. So don’t
rest once you have arrived at a famed trademark. It is then
that the real battle begins. The creative guys get behind the
scenes, it is up to the lawyers to chase away all those after
the brand to avoid genericization.