Tag: trademark

(Don’t) Say My Name

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By Vanessa James

“We’re a company that’s so successful and everywhere you go, you see a scratchy, hairy fastener and you say…

Hey, that’s Velcro.”

So begins the recent Youtube video Velcro released on September 25, 2017. In an effort to protect itself against genericide—an intellectual property term that means the retraction of a trademark because the brand name has become synonymous with the type of product—Velcro released a video pleading with the public to stop saying “Velcro” and start instead saying “hook and loop.”

It may seem innocuous to use brand names to describe products associated with the brand, but this is actually often a red flag that the brand could potentially lose its trademark. For instance, when was the last time you drank from a “vacuum flask,” walked on a “moving staircase,” or went to a “coin laundry shop?”

Velcro, which was first registered as a trademark in 1956, is trying to avoid losing its trademark, as did thermos, escalator, laundromat, yo-yo, aspirin, and pilates. The purpose of a trademark is to uniquely distinguish the goods or services of a company and to help consumers identify the source of a product. When a trademark becomes synonymous with a class of goods, it no longer helps consumers to understand which company made the product. If this happens, the trademark may be cancelled by the U.S. Patent and Trademark Office. Once a trademark is cancelled, the mark can no longer be used to prevent others from using the same mark to describe their products.

One factor courts consider when determining whether a trademark has become generic is whether the owner attempted to educate the public on the proper use of the mark and the generic name for the goods. Enter Velcro’s video. Ad campaigns like Velcro’s have a record of successfully stopping brands from losing their registered trademarks. Campaigns for Xerox (a 2003 advertisement from photocopier firm Xerox read: “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache), Jeep, and Band-Aid saved those trademarks from becoming generic.  Johnson & Johnson changed its marketing jingle from “I am stuck on Band-Aids, ’cause Band-Aid’s stuck on me” to “I am stuck on Band-Aids brand ’cause Band-Aid’s stuck on me.”  Chrysler turned to the term “SUV” instead of “Jeep.” The Dow Chemical Company, which makes a well-known “line of extruded polystyrene foam products,” has worked to remind consumers coffee cups are not made of Styrofoam.

Another recent example of a company fighting to save its trademark comes from well-known jewelry chain Tiffany & Co. Tiffany initiated a legal battle with U.S. wholesaler Costco when Tiffany claimed that Costco infringed its trademark by selling “Tiffany” engagement rings. In retaliation, Costco argued that the jewelry firm’s trademark was no longer valid because “Tiffany” had become a generic term for solitaire-style rings. Judge Swain of the United States District Court for the Southern District of New York determined that Costco did in fact infringe on Tiffany’s trademark and awarded Tiffany $11.1 million plus interest in addition to $8.25 million punitive damages. For now, producing a simple, fun Youtube video is far less costly way for Velcro to protect its trademark.

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Grammy Award-Winning Band The Eagles Sues Hotel California

Hotel CABy Daniel J Goodman

Approximately 1,300 miles from a corner in Winslow, Arizona is a hotel in Todos Santos, B.C.S., Mexico. Its name? Hotel California. One can only assume that it’s a lovely place with plenty of room for all to live it up and enjoy the beautiful Tequila Sunrise Mexico has to offer. But, according to Grammy award-winning band the Eagles, this New Kid in Town is a downright Desperado trademark infringer. On May 1, 2017, the Eagles filed a complaint in the Central District of California for trademark infringement under § 1125(a) of the Lanham Act and for trademark infringement and unfair competition under California common law. Continue reading “Grammy Award-Winning Band The Eagles Sues Hotel California”

Better to be Absolutely Ridiculous Than Absolutely Generic: The Estate of Marilyn Monroe’s Trademark Woes

Picture1By Gwen Wei

On Monday, March 13 2017, a ruling in the Southern District of New York threw trademark practitioners nationwide into a tumult when the presiding judge left open the possibility that a celebrity name could become too generic to enforce as a trademark. The issue: the court’s “serious doubts that V. International will be able to establish that the contested marks are generic”, pitted against its concern that “[r]eaching that conclusion at this state would be premature.”  The celebrity hanging in the balance: Marilyn Monroe. Continue reading “Better to be Absolutely Ridiculous Than Absolutely Generic: The Estate of Marilyn Monroe’s Trademark Woes”

Supreme Court Hears Oral Arguments for Lee v. Tam

lee-v-tam-picBy Kiran Jassal

The Supreme Court of the United States recently heard oral arguments for Lee v. Tam to decide whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment. The disparagement provision resides in Section 2(a) of the Lanham Act and states that a trademark which “[c]onsists of…matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” may not be registered.

In 2011, Simon Shiao Tam filed a trademark application for his band name, “The Slants.”

Continue reading “Supreme Court Hears Oral Arguments for Lee v. Tam”

SCOTUS to Weigh in On Constitutionality of Offensive Trademarks

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Another Controversial Trademark: The Washington Redskins

By Adam Roberts

Simon Shao Tam named his band ‘The Slants,’ to make a statement.  He wanted to address cultural issues and discussions regarding race in society.  This type of free speech is generally considered foundational to the protections of the First Amendment.  But, Tam was denied this right.

In In Re Tam, the U.S. Patent and Trademark Office (USPTO) denied Tam’s registration for ‘The Slants,’ finding that a “substantial composite of persons of Asian descent would find the term offensive.”  Tam appealed his case to the Federal Circuit Court of Appeals who overturned the decision.  In her opinion, Judge Kimberly Moore expressed that the statute on which the Government relied – Section 2(a) of the Lanham Act – was unconstitutional under the First Amendment.  The court held that discrimination against content-based private speech is subject to strict scrutiny, which means the Government must present a compelling interest to restrict this kind of speech.  The Government’s interest in excluding speech they determined offensive was considered illegitimate to the court, and a judgment was entered in favor of Tam.

Continue reading “SCOTUS to Weigh in On Constitutionality of Offensive Trademarks”