Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 23, Issue 6
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When You Fall from Your Rollerblades, Wipe the Blood with a Kleenex, Take an Aspirin, and Slap on a Band-Aid: How Proprietary Trademarks Fall into the Public Domain as Generic Terms.
By Julie A. Greenberg
People are familiar with the most famous examples of trademarks which have been “lost”—or almost lost. That is, brands that were once proprietary and became, “generic,” like ASPIRIN, CELLOPHANE, and HULA HOOP. Some have been able to preserve their trademarks as proprietary marks registered with the U.S. Trademark Office (HULA-HOOP and BUBBLE WRAP each maintain registrations, for example). What does it mean when a proprietary trademark becomes a generic term?
To start, it is important to understand that trademarks are brands, or source identifiers. They help consumers distinguish between one source of goods from other sources. Some trademarks, especially the arbitrary or meaningless ones, are quite memorable (e.g., GOOGLE, GAP, and NIKE). These terms either have no inherent meaning (like KODAK) or have no meaning as they relate to the underlying goods they are associated with (like GAP).
Other marks suggest something about the products they are used with—they have some tie to the underlying goods but are still strong marks. Examples are NETFLIX, KITCHENAID, and 7-ELEVEN; all are strong source identifiers.
Some marks are descriptive but with sufficient brand promotion they can acquire strong trademark rights. Think BANK OF AMERICA, RICE KRISPIES TREATS, and THE HOLLYWOOD REPORTER: all very strong brands.
Generic terms, however, are not entitled to any legal trademark protection. Generic terms are common terms for the underlying goods themselves—apple for apples or used cars for, you guessed it, used cars. For public policy reasons—even First Amendment reasons—the public must retain the free unfettered right to call and sell things by their generic names (“sunscreen sold here” for a seller of sunscreen).
No one can steal from the public domain an exclusive right to a generic term for use in its generic manner. That is why APPLE is not a protectable brand for apples, but APPLE is a protectable brand for computers.
So what happened to one-time well-known trademarks like THERMOS or ASPIRIN to make them lose their once valuable proprietary trademark protection?
The loss of a mark from proprietary to generic—or genericide—is due to the way the goods are referenced by consumers. To understand, the focus is not as much on what happened to the brand as what happened to the underlying goods. In all cases where a once-protectable mark loses its brand status, it is the way the goods are referenced that brings about the trademark’s demise. That is, consumers begin to refer to the underlying genus of goods not by their ordinary words, but rather by their brand. So, tissues become known as “KLEENEX,” plastic wrap becomes known as “SARAN WRAP,” and acetylsalicylic acid tablets become known as “ASPIRIN.” In the trademark world, these marks become genericized. Other examples of genericized marks: THERMOS, ESCALATOR, and CELLOPHANE.
To keep a valuable trademark from falling off the genericness cliff, trademark owners must robustly remind the public to only use their trademarks as a reference to their brand. Thus, Rollerblade® reminds the public that it sells Rollerblade® brand in-line skates, Kleenex® sells Kleenex® brand tissues, and Band-Aid® brand bandages cover scrapes and cuts.
Ponder that while sweating it out in PILATES class (former trademark, now a generic) or a SPINNING class (the term SPINNING is embroiled in trademark litigation, alleged to be generic).
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