Is Genericide Ever Inevitable?

Shoshana Stern

Is Genericide Ever Inevitable?

Outline:

I. Introduction – In determining whether a mark has become generic, the controlling factor is the public's understanding of the mark. However, cases analyzing whether a term has become generic frequently put a great deal of emphasis on the actions of the mark holder – in many cases, the chief evidence in favor of genericness seems to be the way in which the owner itself used the contested word, implying that they let it become generic, and so can't complain now. How do these two factors balance out in courts' analyses, and has it changed over time?

II. The Idea of Surrender to the Public Domain – cases where the mark's owners are taken to have implicitly consented to the mark's genericization

III. Inevitability – when the understanding of the general public trumps all efforts to make them understand differently (sometimes in the same cases)

IV. Does the idea of surrender work both ways – can consistent efforts to keep a word distinctive be counted as evidence in favor of the owner? How strong is this evidence? Do courts reward diligence, or merely punish laxness?

V. In determining whether a previously protected mark has become generic, how often is the decision made on purely objective grounds, and how often is the real deciding factor whether the company holding the mark has done enough to protect it? Clearly, both are real factors, but how often is genericide considered to be a sort of logical consequence of the trademark holder's behavior, and what sort of behavior does this encourage among holders of threatened trademarks?

VI. Genericide and dilution doctrine – Cases in which genericide is an issue not because it's a proffered defense, but because one party is demanding severe definitions of dilution on the ground that such stringent rules are the only way to successfully guard against genericide. Should they be as worried as they are? Articles with suggestions for preventing genericide – are they reasonable? Is the resulting regime in the public's best interest? What's the alternative?

VII. Conclusion

Sources:

E I du Pont De Nemours & Co v. Waxed Products Co, 299 U.S. 601 (1936).

Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19 (1900).

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169(1896).

Ty Inc. v. Softbelly's Inc., 353 F.3d 528 (7th Cir. 2003).

Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965).

King-Seeley Thermos Co. v. Aladdin Industries, Inc.,321 F.2d 577(2nd Cir. 1963).Dixi-Cola Laboratories v. Coca-Cola Co., 117 F.2d 352 (4th Cir. 1941).

Pilates, Inc. v. Current Concepts, Inc.,120 F.Supp.2d 286 (S.D.N.Y. 2000).

Bayer Co. v. United Drug Co., 272 F. 505 (D.C.N.Y. 1921).

J. Andrew McKinney, Jr., Avoiding Trademark Genericide, 37-JUN Md. B.J. 28 (2004).

John Dwight Ingram, The Genericide Of Trademarks, 2 Buff. Intell. Prop. L.J. 154 (2004).