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Don't let your mark commit genericide

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

At our law firm, we represent a wide variety of people and companies seeking to protect their branding in the marketplace from wrongful use. Protectable trademarks and service marks are typically words, logos, symbols, phrases and other similar devices for branding products and services. 

The nature of a trademark is that it is a protected, unique indicator of the source of a product or service. A corollary to this is that a generic term is not protectable as a trademark because it has become the product. It is the "genus" itself - when Aspirin (a brand and by definition an adjective) becomes aspirin, the noun.

Generic terms not protectable  

The corollary to this is that a term may initially be an appropriate trademark, but over time it can become a generic term. Sometimes this process is called genericization. 

An article in Consumer Reports from Consumerist defines this process as when a "single product identified under a name" has "morphed" into an "entire product category." Examples of genericized marks from this article include: 

  • Aspirin
  • Cellophane
  • Escalator
  • Trampoline
  • Thermos
  • Dry ice
  • Kerosene
  • Laundromat
  • Linoleum
  • Zipper
  • TV dinner 

And marks that are still active trademarks, but that "may be in danger of genericide" include some very famous terms like Band-Aid, Crock-Pot, Frisbee, Kleenex, Mace, Realtor, Scotch tape, Popsicle and others. 

Doughnut v. donut 

Currently in the intellectual property news is the announcement that Dunkin' Donuts is dropping the Donuts and becoming just Dunkin'. In an interesting piece in Above the Law, one lawyer-author notes that the company started using the term in 1950, when it was granted registration, but that at that time "donuts" was not disclaimed as generic, while later registrations had to include this disclaimer, suggesting that the term became genericized

Indeed, the author points out that one popular dictionary added "donut" as an alternative spelling to "doughnut." In his opinion, donut is so "accepted that the term itself is generic" for the round pastry with a hole in the middle, and not for the company that used it beginning in 1950 as part of its brand. 

The lesson may be that trademark owners must, among other things, educate and train the public to perceive the trademark as a source identifier, not the thing itself. If Bayer promoter Aspirin but did not educate the public what the generic term is, as modified by the brand name"(e.g., "Aspirin [fill in the common English term]), then the public may simply on its own start using the brand name (aspirin) as the generic term. That's how genericide is committed.

 

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