Tag Archives: Genericness

Generic genericness

IntersessionWhat is “generic genericness”?  I just coined the phrase.  It refers, I maintain, to a genericness defense against infringement made by the junior user of a trademark where the English word on which the defense is premised doesn’t, well, exist, but the defendant maintains that the mark is so generic-y — i.e., so much like other words that really do exist — that it should be treated as generic anyway.

It is an intriguing argument, generically speaking.  But, it seems, a losing one, at least in this UDRP case reported by Gerald Levine:

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, D2013-0268 (WIPO April 17, 2013). In this case, the domain name, is identical to the Complainant’s trademark.

Could it be generic? Yeah, maybe, possibly.  Depends, perhaps, on how many drinks you’ve had.  Either way, however, it’s a problem making this argument after someone else has already coined the term ENCAPTURE and is using it as a trademark:

Respondent argued that “encapture” is a common word. While “en” is a familiar prefix in English, “enthrone”, “enrapture,” “entangle” etc. it does not work with “capture.” “Capture” is a common word, but not “encapture.” What would the word mean? To Respondent the prefix is a substitute for “to ”, but that would violate standard usage. “En” may mean “to put on” (“enthrone”), indicate intensification of an emotional state (“enrapture”), or cause something or someone to become more caught up in (“entangle”). The Panel notes that “Respondent has alleged that the term ENCAPTURE is generic in the sense of describing ‘to capture’. . . .

In other words, Complainant has created a non-word that looks as though it could be a word because it appears to have been properly formed, but in fact its validity to English speakers (as with the fruit examples) depends solely on its use in the marketplace. It works only on the symbolic, not the grammatical level. The Complainant established that the manner in which Respondent was (or had been) using the domain name disqualified it as having a right or legitimate interest in it. While that alone does not establish abusive registration it is certainly consequential in supporting a conclusion that Respondent chose the domain name to take advantage of the trademark.

You might say he tried to “encapture” the goodwill of the markholder, which the UDRP, in its trademark-like way, forbids.  You could say it — but you wouldn’t be talking English.  There’s no such thing, see, as generic genericness.

Best of 2012: Apostrophe now

Originally published October 11, 2012.

Via Courthouse News, a report of a trademark lawsuit that I’d think was merely “apostrophal” if not for the fact that that august publication says it’s for real — and because here’s the complaint off PACER.  The story:

A Philadelphia delicatessen has sued the U.S. Patent and Trademark Office over an apostrophe, insisting that its “Philadelphia’s Cheesesteak” is “so superlative” so “gloriously gluttonous,” it could not possibly be confused with the generic “Philadelphia Cheesesteak.”

Campo’s Deli at Market sued U.S. Patent and Trademark Officer Director David Kappos in Philadelphia Federal Court.

Campo’s Deli, a “Mom and Pop cheesesteak and hoagie* shop, run by Mike and Denise Campo and their children Mike and Mia,” applied for a trademark in 2009, were rejected in 2010, appealed, and were rejected again after an oral hearing in March this year. But because the appeal board reversed the PTO’s refusal of trademark under §§ 1 and 45 of the Trademark Act, “regarding sufficiency of evidence of trademark’s use by plaintiff in commerce,” the Campos appeal de novo.

The doughty family says it’s been using the trademark since at least Jan. 1, 2009 at four retail outlets, including the home stadia [sic] of the Phillies, the Flyers and the Sixers.
Getting down to brass apostrophes, the Campos insist, in their 4-page complaint: “Plaintiff’s mark is, first and foremost, the description of a particular kind of sandwich of a particular quality or standard – a sandwich so superlative, it could only be called ‘Philadelphia’s Cheesesteak.’ . . .

“Plaintiff’s mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.

The apostrophe is worth saving; and the complaint (link above) is worth reading.  Cooked up by Philadelphia’s J. Conor Corcoran, an acknowledged legal windmill-chaser, it is certainly far juicier than the standard fare, including ingredients such as:

16. The difference in the two phrases, of course, is an (’s) which demarcates a particular kind of gloriously gluttonous sandwich provided only by the Plaintiff – not just a Philadelphia Cheesesteak, but “Philadelphia’s Cheesesteak.”

17. Plaintiffs mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.

18. For example, Plaintiff needs its mark so that in pursuing its franchising aspirations, the purchasing public will know that Plaintiff provides a particular kind of Philadelphia Cheesesteak, of such a tremendous quality, such a gustatory delight, and such a propensity for myocardial infarction that it could only be called “Philadelphia’s Cheesesteak” – the very best example of what is otherwise a very common sandwich.

Now, it is odd that the TTAB did not address the myocardial infarction argument in its August 7, 2012 decision (attached to the complaint).  In such  heart-rending situations I turn, naturally to John Welch, who explains like this: Read More…

Frizzled trademark in Korea

Originally posted 2011-04-05 09:36:00. Republished by Blog Post Promoter

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Kyung Jae Park

I received the following in the form of a newsletter from the Book Chon law firm in South Korea.  I get a lot of newsletters and alerts, and don’t hardly ever reprint them.  Plus, with few exceptions, I leave the Korea trademark law firm beat to others.

But the issues in this case involving the MAGIC SCHOOL BUS trademark seemed interesting, and consonant with the sort of things readers of this blog are interested in — in particular, the use of literary titles as trademarks, and assertion of a pretty darned descriptive / generic phrase — here, SCHOOL BUS — as a trademark.  Interestingly, here the overreaching rejected by the Korean court ran in the direction opposite of what I would have expected.  So with the permission of the firm’s Kyung Jae Park, my colleague in the New York bar, I have reprinted the item as a guest post.

It appears that in this case, SCHOOL BUS was not only the plaintiff’s book title but a registered trademark, evidently in connection with the book, but that the preexisting fame of Scholastic’s Magic School Bus book series (the subject of the lawsuit), including international fame, precluded the claim by the plaintiff.  MAGIC SCHOOL BUS, of course, is a registered trademark too, being not merely a book but — as parents know – a way of life.  While under Grimaldi book titles are not usually protectible as trademarks, as lawyer Lloyd Jassin explains,”Generally, titles of works that are part of an ongoing series are protected under trademark and unfair competition law. . . . Once a series has been established, each work in the series reinforces that it comes from the same source as the others.”  This issue is addressed in the last section of the post.

Book Chon is of course entitled to the full plug in return for providing me with a fine substantive post today.  So you should know that the firm provides a number of legal services in Korea including filing and prosecuting patent and trademark applications with the Korean Intellectual Property Office, and suits and complaints with Korean courts and public prosecutor’s offices.

Representative Attorney at Law Kyung Jae Park, member of the Korea, New York and Pennsylvania bar, graduated from the Law School of Seoul National University in Korea, University of Pennsylvania Law School (LLM) and Chicago-Kent College of Law (JD) in America.  The firm is located at 177-10 Gahoe-dong, Jongro-gu, Seoul 110-260, Korea, so do drop in if you’re in the neighborhood.  You can email attorney Park : park@bookchon.co.kr.  The firm’s website, again, is www.bookchon.co.kr.

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The Seoul Central District Court rules that the trademark “The Magic School Bus” of SCHOLASTIC INC. in America is different from “School Bus” of DAE GYO CO., LTD. in Korea.

Uncharacteristically, Miss Frizzle could not be reached for comment.

We would like to share a decision of the Korean court on a trademark infringement case. The plaintiff was a Korean company while the defendant was an American one.  Although the decision was made by a district court (the Seoul Central District Court), we believe the decision has a significant meaning and thus offer this special report in the hopes that will help you better understand the Korean trademark practice.

The Seoul Central District Court rejected an action for trademark infringement (Case No. 2009 GAHAP 138319) filed by a Korean company, DAE GYO CO., LTD. (“plaintiff”) against SCHOLASTIC INC., an American company, and BIRYONGSO CO., LTD., a Korean company, “defendants”) on November 26, 2010. The basis of the rejection was that the defendants did not infringe the trademark rights of the plaintiff.

SCHOLASTIC INC. sold The Magic School Bus, a series of scientific picture books for children, in Korea through a Korean company, BIRYONGSO CO., LTD., as the exclusive distributor of the book.  The plaintiff filed an action against the defendants with the court on December 7, 2009 on the grounds that the title of SCHOLASTIC INC.’s The Magic School Bus infringed the rights of its registered trademark SCHOOL BUS, the title of plaintiff’s book.

The main reason the court rejected the demands of the plaintiff was that THE MAGIC SCHOOL BUS was already well-known worldwide.  The evidence which the Court accepted in support of the argument that THE MAGIC SCHOOL BUS of SCHOLASTIC INC. was already well-known in Korea as well as in other foreign countries are as follows: Read More…

Out-Googled

Originally posted 2005-05-06 09:16:00. Republished by Blog Post Promoter

By the way, don’t get me wrong. I’m trying to cover the Google IP territory, if not comprehensively at least on the high points. But within the blogging world, I see now that there are places where the Google-obsessed can get a permanent Google-high: Of course, Google — which, after all, brings us Blogger and, hence, this blog — has its own official blog. (Which, not surprisingly, isn’t on the Blogger platform.) Then there’s The Unofficial Google Weblog. (Just not too unofficial.) Another is the awkwardly-named Google Blogoscoped. That’s about all I turned up… on Google.