Trademark Law and Generic Names

1
Trademark Law and Generic Names

• Genericide -- The death of the strength of the
  once arbitrary and fanciful

2
Generic Marks Described

• Generic marks are so associated with a particular
  product class that they have become the natural
  way to refer to the type of product
• Contrast with the purpose of strong trademark
• any word, name, symbol, or device, or any
  combination (1) that a person uses or (2) intends
  in good faith to use in commerce
• to identify and distinguish the product from
  those of others, and
• to indicate the source of the product

3
Generic Marks Defined

• Generic marks are in the final category of the
  distinctiveness spectrum
• Generic marks are those that are or have become
  the common descriptive name of the product with
  which they are used
• Generic marks do not just describe the product,
  but in common parlance constitutes its very name
• Generic marks identify the product itself, not
  the distinguishing features of the product or the
  source or producer of the product

4
Examples of Generic Marks

• Aspirin, Escalator, Opry, Car, etc.
• A portion of a mark deemed generic does not
  necessarily result in the entire mark being
  unprotected from infringement
• An infringement claim will stand or fall on the
  similarity of the allegedly infringing mark to
  the remaining portions of the allegedly infringed
  mark

5
Goodwill and the Tripartite Investment Model

• Through the advertising model, goodwill can be
  described as the economic value of consumers
  associations with a firm and its trademark
• Goodwill is the residual benefit a firm receives
  from making the three types of investments, which
  are
• investment in the creation of the mark
• investment in advertising and promoting the
  product in association with the mark
• product-related investments such as high-quality
  raw materials, production equipment, and quality
  assurance techniques

6
Primary Significance Test

• A valid trademark is established when a plaintiff
  demonstrates more than a subordinate meaning of a
  product
• To establish a valid trademark, a plaintiff must
  show the primary significance of the term
  (mark/names) in the minds of the consuming public
  is not the product, but the the producer
• For new product names, the test is modified to
  (1) type the product by common descriptive terms
  describing the new characteristic, then (2)
  evaluate the term to measure competitors need to
  use the description

7
Applying the Primary Significance Test

• Genesee v. Stroh
• Genesee wants exclusive use of the words Honey
  Brownas its mark for its lager beer, and it
  seeks to enjoin Strohs use of the words Honey
  Brown to describe its ale beer
• Stroh markets its ale as Honey Brown, and it
  relies on the modified primary significance test
  to argue that the words Honey Brown describe
  the new characteristic of its ale beer

• Kellogg v. Nabisco
• Nabisco wants exclusive use of the name,
  Shredded Wheat and its pillow shape, as well it
  wants relief for a claim of passing off
• Kellogg wants to market its own cereal, as well
  it claims that Nabisco has not met the primary
  significance test regarding the association
  between the name, Shredded Wheat, and the
  producer, Nabisco