DuetsBlog Collaborations in Creativity & the Law

Unlawful to Rollerblade?: An Important Lesson in Product/Service Naming

Posted in Advertising, Branding, Genericide, Loss of Rights, Marketing, Sight, Trademarks

This kind of sign is all over the place. They are readily available for sale on-line too, see here, here, and here. In fact, a similar one is posted on every level of at least one parking garage in downtown Minneapolis. What does it mean to you? How about to the Rollerblade® brand?

For example, would you be “o.k.” skating in the vicinity of the sign wearing, say, K2® brand in-line skates, or perhaps, Nike® Bauer® in-line skates? Would the owner of the real estate who posted the sign agree? Would Nordica® agree, as the owner of the ROLLERBLADE® mark? Doubtful.

Similar misuses of the ROLLERBLADE® brand appear in city and township ordinances and in meeting minutes across the country. Some make “unlawful” the operation of a “skateboard or rollerblade” except on sidewalks. Others forbid “rollerblading (which is the same as inline skating).” Yet others seem to only forbid “rollerblading” when there is a “dog in tow.” Ah, right. Some progressive cities have had the foresight to forbid not only “rollerblading,” but “roller skating” too, closing the potential branding loophole defense, for us trademark types.

How does this happen? Seth Godin’s recent blog post “Where’s the Baxter?” may have some application here, perhaps with a little embellishment by yours truly. Mr. Godin correctly reminds us of the importance of creating a “name” for a new product, especially when “you make something remarkable,” or “its something that hasn’t been done before,” basically, when “you’ve created something worth talking about,” and it may disappoint others to learn when they like the name too, it “is already taken.” When something is “taken” in the naming context, we’re talking about brand names, not generic names. The former can be owned, the latter cannot. So, brand names seem to get the most attention prior to launching a revolutionary new product or service.

Getting much less attention, and deserving far more, is the need to create an acceptable generic name too, especially when the new product is truly “remarkable,” and appears headed for creating a new category. For example, had Rollerblade® adopted, embraced, and promoted “in-line skates” as the generic name for the category it “pioneered” in the early 1980s, it seems unlikely the misuses would be as prevalent as they are today. How do we know it didn’t take these early steps? Besides my imperfect consumer recollection from the decade of the 1980s, I rely on the clunky patent-like generic product description set forth in the original ROLLERBLADE® trademark registration (1985), covering “boots equipped with longitudinally aligned rollers used for skating and skiing.” Uh, not a very consumer-friendly sound-bite. As far as I can tell, it wasn’t until the close of the 1980s that the term “in-line skating” or “in-line skates” began to appear, at least, in Rollerblade® trademark filings, see the 1990 U.S. registration for TEAM ROLLERBLADE®. A decade is a lot of history to erase.

  • http://www.duetsblog.com/ Dan Kelly

    Patentese has its place, but not in a trademark goods and services description.
    Maybe we could start a new sign campaign: “NO SKATING OR SKIING WITH BOOTS EQUIPPED WITH LONGITUDINALLY ALIGNED ROLLERS!”

  • Tony Vella

    Steve,
    Check out this interesting ICANN decision from WIPO about rollerblading.com: http://www.wipo.int/amc/en/domains/decisions/word/2000/d2000-0427.doc . . . not to spoil the surprise.
    ROLLERBLADE¬Æ, BAND-AID¬Æ, KLEENEX¬Æ,and XEROX¬Æ as you know have faced a similar dilemma. I especially love Xerox Company’s advertisements attempting to combat genericide . . . the graveyard of generic trademarks always comes to mind.
    P.S. I enjoyed the Advanced Trademark Seminar that you moderated in Minneapolis – it was an entertaining CLE for IP professionals who practice in the area of trademarks.
    Ciao!
    Tony Vella

  • http://www.yaelmiller.com yael miller

    Great blog btw – first visit here via linked in. :)
    I’ve always thought the when a brand name goes ‘generic’ it shows just how entrenched and ubiquitous the brand has become to people. It’s supposed to be a sign of having ‘made it’. Does a ‘genercized’ brand necessarily have to be a bad thing from a branding perspective?

  • Steve Baird

    Great pair of comments.
    The domain name dispute from 2000 is interesting because it demonstrates that Rollerblade was unable to compel transfer of the domain, even when the content related to the sport of in-line skating. The panel noted that “the public created a generic term derived from Complainant’s mark” in denying Rollerblade’s request to order transfer of the domain.
    This decision also illustrates how the trademark owner can lose control of a mark as it approaches becoming generic. Once generic, there is no turning back, and the term is available for anyone to use without permission. I’m guessing that Otis Elevator Company doesn’t think it “made it” when Escalator became so ubiquitous the former brand became generic and forever entered the public domain.
    Thanks, Steve

  • http://www.adproducts.com.au Matthew Cummins

    A very interesting article, and a topic that has come up again with google becoming a verb, and Microsoft’s new Bing search engine wanting to.
    My feeling is that it’s a two edged sword – at the brand building phase it can be an amazing advantage and keep the brand well ahead of competitors. But at a later brand protecting and consolidating phase (after everyone knows it) it can become a very negative thing.
    Overall I would say brands that have gone close to becoming generic but everyone knows that it’s really just a brand (Google comes to mind), are at a sweet spot in my opinion, compared to a brand like Rollerblade – I remember as a kid in the late 80′s I thought I had a pair of rollerblades – but just had a pair of generic inline skates – back then I didn’t even know rollerblade was a brand!

  • http://www.brandnewmeaning.com/ M.C.

    Interesting article. In general naming is quite difficult. To avoid simple misstakes I use naming services which supports the whole naming process and eliminates bad words in different languages etc.

  • http://www.inlineskates.net Rollerblades

    Seems that the most common used phrase is “rollerblade” with many unknowingly stating is as a generic term and not understanding it is a brand. Obviously in the case of the sign above it could potentially be damaging to the Rollerblade company itself if it actually used the term “rollerblade” however, rollerblading is a different term in my opinion with encompasses inline skating as well.

  • http://www.globalnaming.com My name is Marcus

    In this case the brand name has become a generic term. For most people rollerblades just means roller skates. To fully understand what your new name means, use a naming process to get a report on the name.