Tag Archives: Genericide

The slide to genericide

Originally posted 2006-07-24 23:38:26. Republished by Blog Post Promoter

Evan Brown writes about everyone’s favorite candidate for the dustbin of trademark history — Google.

It’s obvious to me that Google has made a conscious decision not to police the use of its trademark as a verb, because as far as I know it never does. The reason is not obvious to me, however, since Google does indeed police other trademark infringements, including dubious ones. But I am very reluctant to second guess Google, which has been very, very good to LIKELIHOOD OF CONFUSION.

Hotels.com is generic for…. what exactly?

Originally posted 2006-10-16 18:01:53. Republished by Blog Post Promoter

Hotels, of course.

Hotel

Hotel

But read this whole item on the TTABlog. It’s a half a primer on the law of trademark in our time.

UPDATE:  Does my Old Post Promoter thing know when something’s bubbling up again on the Web?  Or is this just a coincidence?

Bates and hooks

Originally posted 2012-06-05 19:02:33. Republished by Blog Post Promoter

Bates numbering, that is.

As a litigator, I’ve been living with Bates-numbering, or Bates-stamping, for over 20 years.  (I’m not the only one!)  I have manually stamped documents using a Bates stamp.

These days we Bates-stamp (not “Bate-stamp”) electronically, mostly.

I noticed this when I was Bates-stamping a small supplemental document production using Adobe Acrobat today.  It looks like this:

 

So, as a trademark lawyer, that made me a little curious.  Because “Bates” sounds like — and is — a name, right?  Proper name… a product… associated with one another…. what is that called again?

A trademark, maybe?  Does a trademark belong in the Adobe menu like that?

Well, BATES is a common enough name that I wasn’t going to read every single BATES trademark registration.   (For free, that is.)  So in running down this issue, I only read the live ones.   I didn’t find anything.

Strange, I thought.  No one ever tried to protect the BATES numbering stamp trademark?  Indeed, in the pictures of old Bates stamps I snagged off the Net for this piece, there is no indication of an effort to assert a trademark — an effort that, if applied diligently, would probably have been succesful.

But I had to make sure… and, wait a minute!

Yes!

I had spied this version of the Bates stamp in several pictures.  Finally, I found this clear shot of a Bates stamp bearing the mark BATES with a “circle-R” trademark registration symbol!  Ah… Bates® … Royall®!  Circle-R!  You can in fact buy one even today.

Bates®.  Royall®.

Bates-Circle-R?  Really?

Not really, it seems. Or not quite. Read More…

Putt this in your pipe and smoke it

Putt Putt Fun CentersPutt-putt — miniature golf, right?

Yes, but, PUTT-PUTT® — registered trademark for miniature golf services!  Steve Baird explains:

So, I learned two things this weekend, Adam Scott is the first Australian to win the Masters, and “putt-putt” golf is a brand of miniature golf, not a generic designation for a type or category of golf game. In fact, I was surprised to learn that the brand is subject to federally-registered trademark rights, and for much more than mini-golf services, see herehereherehere, and here.

In the Putt-Putt v. 416 Constant Friendship decision, the court granted summary judgement in favor of Putt-Putt’s federal and Maryland State trademark infringement and unfair competition claims. The court basically found it unnecessary to hold a trial in order for Putt-Putt to win. Not only did the court find there to be infringement as a matter of law, it also found Putt-Putt to be a “strong” trademark.

Why the surprise? I grew up using and hearing the term as a generic reference, not a brand. Apparently 416 Constant Friendship couldn’t muster up enough evidence to even create a genuine issue of material fact on the question of validity. Survey evidence would have been interesting, but there was no mention of this type of evidence, the registrations appeared to carry the day on validity.

I’m surprised too.  And it’s a little troubling, as Steve seems to be saying, that the issue was decided on summary judgment.  Just as I said about the purported trademark for “ping pong” years ago, yes, you can have a trademark registration, so technically speaking you have a trademark unless and until someone pushes back in front of a judge or a jury, or both.  In the case of ping pong, which  is what everyone calls table tennis, I am certain that if that happened, that registration would be history.

So as I say, like Steve, I would have thought the same thing regarding PUTT-PUTT.  So what exactly did happen in that case?  It’s worth looking a closely at the opinion.

For one thing, it doesn’t appear that Putt-Putt, LLC was looking for trouble here.  This lawsuit was evidently not born of a cease and desist letter or some sort of enforcement campaign, but rather a trademark registration application by the defendant, 416 Constant Friendship LLC, for the mark “PUTT-PUTT FUN CENTER” for, well, miniature golf type stuff.  This terms is, as you can see on the screen shot above, how Putt-Putt brands its fun centers.  This brilliant move was made on March 5, 2012.

Dude.  Putt-Putt didn’t only already have half a dozen PUTT-PUTT trademarks, i.e., the ones Steve links to.  Putt-Putt had itself filed trademark application a month earlier for the mark … yes — PUTT-PUTT FUN CENTER – which was published for opposition the next July and added to the Register on October 9, 2012.

What were the Constant Friends thinking?  (Not even going to talk about the lawyer who filed that application — not today.)

Well, let’s take a step back. Read More…

Best of 2012: Bates and hooks

[stextbox id="info"]Originally posted on June 5, 2012, this may be the best post of all of 2012, and maybe ever, on LIKELIHOOD OF CONFUSION® or any other blog.

Okay, on LIKELIHOOD OF CONFUSION®.[/stextbox]

Bates numbering, that is.

As a litigator, I’ve been living with Bates-numbering, or Bates-stamping, for over 20 years.  (I’m not the only one!)  I have manually stamped documents using a Bates stamp.

These days we Bates-stamp (not “Bate-stamp”) electronically, mostly.

I noticed this when I was Bates-stamping a small supplemental document production using Adobe Acrobat today.  It looks like this (click the graphic for a better look):

 

So, as a trademark lawyer, that made me a little curious.  Because “Bates” sounds like — and is — a name, right?  Proper name… a product… associated with one another…. what is that called again?

A trademark, maybe?  Does a trademark belong in the Adobe menu like that?

Well, BATES is a common enough name that I wasn’t going to read every single BATES trademark registration.   (For free, that is.)  So in running down this issue, I only read the live ones.   I didn’t find anything.

Strange, I thought.  No one ever tried to protect the BATES numbering stamp trademark?  Indeed, in the pictures of old Bates stamps I snagged off the Net for this piece, there is no indication of an effort to assert a trademark — an effort that, if applied diligently, would probably have been succesful.

But I had to make sure… and, wait a minute!

Yes!

I had spied this version of the Bates stamp in several pictures.  Finally, I found this clear shot of a Bates stamp bearing the mark BATES with a “circle-R” trademark registration symbol!  Ah… Bates® … Royall®!  Circle-R!  You can in fact buy one even today.

Bates®.  Royall®.

Bates-Circle-R?  Really?

Not really, it seems. Or not quite.

So…. another Google search, this time for the words BATES and ROYALL, and I got to a helpful link on Trademarkia, those scoundrels!, listing all the “Bates Manufacturing Company, The.”  There are 35, says Trademarkia.  Of them, 34… dead.  The live one:

Why, that’s not a trademark registration for BATES at all!

Among the dead registrations listed by Trademarkia, in fact, none of them seems quite to identify a Bates stamp, i.e., a “numbering machine.”

So it seemed clear:  “Bates numbering” is indeed generic for Bates numbering — the placement of serial indices on images and documents, such as in preparation for document production in a litigation matter, and, historically, with a Bates stamp.  This is a nice little article on Bates stamps, by the way, among all the ones I saw preparing this post.  Tah-dah!

Well, not so fast.

Now Edwin Bates (per this Wikipedia article) knew a little about IP, or his lawyer did:  He got three patents for his Bates stamp.  No trademark, though?

No, not “no trademark.”  Well, not “no trademark registration.”  Keep reading.

Did you think I was going to rely on Trademarkia for this answer? Read More…

MasterCard card. Card card. Card.

Originally posted 2008-12-17 12:21:30. Republished by Blog Post Promoter

Mastercard Card

A reader writes to New York Times Q&A guy Stuart Elliot with a question that’s on a lot minds:  What’s with this “Mastercard card” stuff you hear on the commercials?  There are, evidently, two answers, the second of which was LIKELIHOOD OF CONFUSION®’s guess and the first of which is… well, here, read it for yourself:

“Essentially, many times it’s because we’re driving consumers to use their physical payment card,” says Jon Schwartz, a spokesman for MasterCard Worldwide in Purchase, N.Y., “so we must distinguish between our brand and the MasterCard-branded credit or debit cards that consumers utilize to make purchases.”

You must, eh?  Well, in this humble marketing-and-branding-savvy-law-blogger’s opinion, you’re not.  We can barely follow what you’re talking about, and that’s because what you’re talking about, Jon — can we call you Jon?, thanks — is incoherent.  MasterCard may think consumers understand this distinction via a 30-second spot, but how can they when it doesn’t even make sense no matter how long you stare at it in black and white?

MasterCard, he says, wants us to distinguish between these two things:

  1. “our brand” and
  2. “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”

Well, what is “your brand” besides “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”?  Can people use the “brand” at the local haberdasher while keeping their plastic in their wallets?  And, far be it from us to give out free legal advice to a company that has more than once ignored a demand letter from us (and to good effect!), but if there is such a distinction — if (1) and (2) are not the same thing — then whose “brand” is the “brand” in (2), and why aren’t you suing them for trademark infringement?

Which leads us to reason number two:  Trademark infringement.

Another reason for the seeming redundancy is trademark issues. “MasterCard is a trademark name, which should be followed by a generic noun,” Mr. Schwartz says. That is because using a trademark as a noun could weaken its uniqueness, as the trademark lawyers for brands like Band-Aid, Kleenex and Xerox could attest.

That’s what we figured, but we were hoping for something better than that.

Is there a realistic concern that in a market saturated with credit and debit cards, even an iconic brand such as MasterCard could morph into a generic term for “any credit card”?  Is it really conceivable that the following conversation could take place?:

“Marge, can you get my wallet out of my coat in the back seat and pull out a mastercard for me so I can pay for the fillup?”

“Which mastercard, Fred?  The Amex mastercard or the Visa mastercard or the MasterCard mastercard?”

“Oh, it doesn’t matter.  One mastercard’s as good as another!  But let’s use the Visa mastercard.”

Survey says:  No.  Band-Aid, Kleenex and Xerox flirted with genericness because they were early and dominant entrants in categories they actually created and “owned” for years before other brands made a dent in their domination (see here for Band-Aid; Kleenex; Xerox).  In contrast, MasterCard presently holds a mere 27% global market share for “general purpose” charge cards.  With all due respect, MasterCard is in no danger of becoming a generic term for “credit card” — even though, yes, it has the word “card” in it.

“MasterCard card” is a bad advertising and marketing idea that’s distracting to consumers and, as we put it in the branding game, just sounds dumb.   Unless the Times got Jon Schwartz wrong, it seems that poorly thought-out rationales, both brand-wise and legal-wise (as they used to say on Madison Avenue), are driving the kard-kard koncept.  It should be kanned.

Museum of genericization

Originally posted 2010-10-06 13:07:21. Republished by Blog Post Promoter

The Merriam-Webster Online dictionary has a cute little feature:  The “Top Ten Words from Trademarks.”  You know, mainly the usual suspects:  Band-Aids, etc.  It’s a study in what can go wrong if you don’t “police” your trademark, yada-yada-yada.

Noah Webster

A Webster, not a webster

Speaking of brand management and equity, when I saw this link — hat-tip to Jane Coleman! — it reminded me of how much the Merriam-Webster people need to do stuff like this to build back the primacy they ought to have online but which I have the impression has been ceded to Dictionary.com.

That, in turn, made me think of one very famous “word from a trademark” — the one damnable genericized mark — Merriam-Webster left out of the list!

UPDATE:  I didn’t take a screen shot when I first published this post, but as of June 29, 2011, here’s how Merriam Webster shows up in a Google search for the word DICTIONARY, at least from my desktop in New York:

Looking it up

Second result — not too shabby.

Trademark blogoids

Originally posted 2009-05-19 01:31:51. Republished by Blog Post Promoter

Blogoids?  Tablogs?  It could happen!  After all, look how we got the word “tabloid.”  Did you ever think about what an odd name that is for a newspaper that’s guilty of no more than being immensely simpler to read than obsolescing dinosaurs such as “broadsheets”?

Well, yes, it is odd.  Nancy Friedman has the story.  Just as the trademark of tabloids is classic, classy headlines such as these –

– tabloids themselves bear, by their name, the sad story of a now-unlamented genericide that and that may actually have been unavoidable in the era before trademark dilution became a crime:

What I hadn’t known was that tabloid derives from an old trademark for a pharmaceutical brand. Ralph Keyes enlightened me in his recently published book with the excellent title I Love It When You Talk Retro: Hoochie Coochie, Double Whammy, Drop a Dime, and the Forgotten Origins of American Speech:

At first readers didn’t know what to call this compact type of newspaper. By analogy it resembled a kind of compressed medical pill introduced in 1884 by Burroughs, Wellcome. That pharmaceutical company called its new product line Tabloid. It didn’t take long for this term to be applied to any compressed item, including the vertical-fold newspaper format pioneered by London’s Daily Mail and New York’s Daily News. Because tabloid newspapers tended to emphasize sensational news coverage, their name itself came to signify that style of reporting.

Sounds like a good book.  Wonder if it’s neatly folded on the left, like newspapers for dum-dums like us.