DuetsBlog Collaborations in Creativity & the Law

Category Archives: Genericide

Subscribe to Genericide RSS Feed

Putt-Putt Has No Miniature Trademark Rights

By on Posted in Branding, Genericide, Infringement, Law Suits, Loss of Rights, Trademarks

With all the golf coverage of the Masters Tournament and the coveted Green Jacket, this past weekend, it seemed particularly appropriate to report on a recent trademark case involving the miniature variety of golf: Putt-Putt, LLC v. 416 Constant Friendship, LLC (April 5, 2013 D. Md.). So, I learned two things this weekend, Adam Scott… Continue Reading

Crushing a Perfectly Good Brand Name?

By on Posted in Advertising, Almost Advice, Branding, Genericide, Loss of Rights, Marketing, Trademarks, USPTO

Remember how important it is to stay on the right side of the suggestive/descriptive line when it comes to making proper use of a brand name? We have cautioned about the danger of “taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the Internet,” because… Continue Reading

BAND-AID, TM Death by a Thousand Cuts?

By on Posted in Advertising, Branding, Famous Marks, Genericide, Loss of Rights, Marketing, Trademarks, Truncation

If you were a Band-Aid brand adhesive bandage, and you were cut, would you protect yourself? Brent, sorry I couldn’t help myself, I’m still enjoying your Louis Vuitton waffle-maker post. With that intro, let’s turn another page to the Genericide Watch category, here at DuetsBlog: In focusing attention on the first item in the list shown above, to the… Continue Reading

The Not-So-Happy Place of Genericness

By on Posted in Articles, Food, Genericide, Infringement, Law Suits, Loss of Rights, Non-Traditional Trademarks, Trademarks

Restaurant trade dress is possible to own when the claimed trade dress is distinctive and non-functional, think Taco Cabana. Restaurant trade dress can be so unique in the marketplace that distinctiveness is presumed with a finding of inherent distinctiveness. When not so obviously unique, distinctiveness also can be established with the more difficult proof of secondary meaning. Remember 1992? The… Continue Reading

The Soft Underbelly of Turtles Candy: Is the U.S. Trademark at Risk of Genericide?

By on Posted in Advertising, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks

It has been a while since we’ve added another page to the Genericide Watch, so a little trip to Candyland, the Twin Cities’ local iconic and old fashioned candy shop, didn’t disappoint: I suppose that Candyland’s ”Mock Turtles” sign is meant to communicate that it isn’t actually selling authentic Turtles brand pecan/caramel/chocolate candy from DeMet’s Candy Company. But, what does that imply about the Cashew Turtles, Pecan… Continue Reading

A Trademark Spinning Out of Control?

By on Posted in Almost Advice, Articles, Branding, Genericide, Loss of Rights, Marketing, Trademarks

With the upcoming 2012 presidential election, this is the time during our American political cycle where spinning is almost a sport — at least an expected activity. Puns intended, as you’ll see. Over the last several years, I’ve heard my wife speak about “spinning classes” at a local health club (mind you, not at the local political party caucuses) – so, a… Continue Reading

When is a ballpark frank a ball park BRAND frank?

By on Posted in Almost Advice, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks, USPTO

Do you suppose the author of this article knows that Ball Park is a federally-registered brand name and trademark, not an unprotectable generic term synonymous with hot dogs and frankfurters? The growing prevalence of lower-case brand styles and visual identity has complicated the answer to this question a bit, I suspect. Nevertheless, we should probably chalk up another example for… Continue Reading

Yes, you can still wipe your Pierrade with Sopalin without risking trademark genericide (in France, that is)

By on Posted in Advertising, Branding, Famous Marks, Food, Genericide, Guest Bloggers, International, Law Suits, Loss of Rights, Mixed Bag of Nuts, Taste, Trademarks

- Marie-Gwénaëlle Chuit As Steve frequently points out on this blog, trying to turn your trademark into a reference might lead to genericide, thus trademark owners should be very careful when walking this narrow line. The French IP law (CPI) demands that a trademark be distinctive to be considered valid (L.711.2 CPI), and that owners… Continue Reading

Can Anyone Smash a Burger?

By on Posted in Almost Advice, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks

While visiting SmashBurger this weekend, I noticed a new drink cup, and I anxiously examined it, wondering whether it had been updated to remove the previously devastating (to a trademark type) language: “Where SMASH means we literally smash 100% Angus beef at a high temperature to sear in all the juicy burger goodness.” For a… Continue Reading

Someone’s Got Googly Eyes – Complaint Filed For Cancellation of GOOGLE

By on Posted in Genericide, Law Suits, Trademarks

On May 21, Google was sued by an individual who purchased and registered 750 domain names incorporating the term “google” (e.g.  googlestarbucks.com, googlemcdonalds.com, googleeagle.com, googledemocrats.com, googlerepublicans.com…you get the idea).  The complaint filed by David Elliott can be found here (thanks to Jeff John Roberts of paidContent.org for the link).   Interestingly, Mr. Elliott is named as… Continue Reading

Lacking Credibility

By on Posted in Almost Advice, Branding, Genericide, Loss of Rights, Marketing, Trademarks

I’ll have to say, I really enjoyed Aaron Keller’s guest post from yesterday. In addition to the valuable insights he provided, it got me thinking about some perhaps unrelated, but parallel topics of likely interest to legal and marketing types. Aaron wrote about the importance of a brand being honest with itself and others. He expressed the need… Continue Reading

Webinar: Hot Marketing Topics with Trademark & Legal Implications

By on Posted in Branding, Genericide, Guest Bloggers, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Trademarks

Last week I had the distinct pleasure of participating in a ninety-minute webinar with my good friend, frequent and eloquent guest-blogger on DuetsBlog – Aaron Keller of Capsule – complete with some friendly banter on the following: "Hot Marketing Topics with Trademark and Legal Implications." Minnesota Continuing Legal Education has generously provided a link where the webinar can be viewed in its entirety, here. As you’ll… Continue Reading

Brilliant Trademark Advice or Baloney?

By on Posted in Almost Advice, Genericide, Marketing, Trademark Bullying, Trademarks

A few bits of trademark advice recently passed across my screen from The Marketing Blog: Turning Entrepreneurs Into Marketers – advice that I believe deserves some friendly comment and critique, leaving you to decide whether any of it rises to the level of brilliant trademark advice or sinks to the level of trademark baloney: “Trademark as you go. Don’t wait… Continue Reading

Artisan Puffery?

By on Posted in Advertising, Branding, Food, Genericide, Marketing, Trademarks

There once was a day when being an "artisan" meant something: "A person or company that makes a high-quality, distinctive product in small quantities, usually by hand using traditional methods: artisan foods." The key elements of an artisan’s handiwork seem to be hand-crafted, distinctive products of high-quality that are produced in small numbers. Perhaps bread from the… Continue Reading

When You Verb Your Trademark, You Know What?

By on Posted in Advertising, Branding, Genericide, Loss of Rights, Marketing, Television, Trademarks

Well, perhaps more than just about every trademark use guideline in existence, including those offered by the International Trademark Association (INTA) ("NEVER use a trademark as a verb"):  (television commercial link on Youtube here) Maybe because you have been following the trademark verbing dialogue here on DuetsBlog and you have learned all about Managing The Legal Risk of… Continue Reading

Messin’ With Google

By on Posted in Advertising, Genericide, Law Suits, Marketing, Search Engines, Television, Trademarks

What does Google have in common with Sasquatch? Well, perhaps one possible point of similarity is that if you mess with either, you might get yourself seriously messed up in the process. With respect to the defensive power of Sasquatch, a local Wisconsin business success story, Jack Link’s Beef Jerky, has gotten much notoriety with its series of hilarious 30-second television… Continue Reading

A Legal Obligation to Enforce Trademark Rights?

By on Posted in Dilution, Fair Use, Famous Marks, Genericide, Infringement, Law Suits, Loss of Rights, Trademark Bullying, Trademarks

When trademark owners are accused of bullying and shamed in public, a common and knee-jerk defensive response to justify the cease and desist letter or enforcement action is: ”We have a legal duty and obligation to police and enforce our trademark rights.” And, some might even go on to say: ”If we don’t enforce our mark against this use,… Continue Reading

Onesie of a Kind?

By on Posted in Genericide, Infringement, Law Suits, Loss of Rights, Trademarks

–Dan Kelly, Attorney I have been a parent for a little less than a year now, and I made a shocking discovery this week:  ONESIES is a registered trademark.  I found this out from a news article that Gerber Childrenswear is suing California Christiania Republic (“CCR”) for infringement of of the ONESIES mark for CCR’s “one*Z”… Continue Reading

A Few Trademark Grammar School Facts

By on Posted in Copyrights, Genericide, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Trademark Bullying, Trademarks, Truncation

Any recent graduate of trademark grammar school knows, at least, the following twenty facts (perhaps there is, at least, one opinion among them): A trademark identifies, distinguishes, and indicates the origin of goods; A trademark should be searched and cleared before adoption and first use; A trademark needs a trademark attorney to take a position on availability; A trademark… Continue Reading

Is the iPad Name Going Generic?

By on Posted in Branding, Famous Marks, Genericide, Guest Bloggers, Loss of Rights, Marketing, Search Engines, Trademarks

—Mark Prus, Marketing Consultant at NameFlashSM Like many professional name developers, I opened 2010 by making fun of the Apple iPad name. Steve Jobs gave a strong case for naming the “tablet pc” in a way that was consistent with previous Apple naming conventions (iPod, iTunes, iPhone), but many of us poked fun at the… Continue Reading

How Realistic is the Risk of Trademark Genericide?

By on Posted in Advertising, Branding, Genericide, Loss of Rights, Marketing, Trademarks

The Grand Marshal in the Parade of Horribles, at least for some trademark types, is the one who forbids any deviation from the absolute "rule" against using brand names and trademarks as nouns or verbs, a standard "rule" commonly found in trademark use guidelines (only permitting the use of trademarks as adjectives). As I have written about previously, these "rules"… Continue Reading

Get a Load of This: General Mills Takes Offense in Trademark Spat Over Spuds

By on Posted in Branding, Food, Genericide, Infringement, Law Suits, Marketing, Trademarks

          They say that the best defense is a good offense. It appears that General Mills has adopted this strategy in a recent trademark dispute over the term LOADED in connection with instant potatoes. Just yesterday, the Minneapolis St. Paul Business Journal reported the filing of a federal district court lawsuit by General Mills against Idahoan Foods, in which… Continue Reading

Managing The Legal Risk of “Verbing Up” Brands and Trademarks

By on Posted in Advertising, Branding, Domain Names, Genericide, Loss of Rights, Marketing, Trademarks

Trademark lawyers need to face the facts. Despite decades of ardent counseling to the contrary, business executives and marketers are not only testing the waters with the treatment of their most valuable brands as verbs, in some cases, they are diving in head first, committing substantial resources and effort toward the clearly stated goal of "verbing up" and having their brands used as verbs by… Continue Reading