The term Comic Con has become synonymous with a certain culture.  In recent years, comic book conventions (and comic book culture), have become increasingly popular.  Annual comic book conventions are held in major cities across the U.S. and the world.  Many of these conventions are titled—officially or unofficially—“[City] Comic Con.”  One recent jury decision, however, may cause some (official) rebranding.

In 2014, the San Diego Comic Convention (San Diego CC) sued organizers of the Salt Lake Comic Convention (Salt Lake CC) for trademark infringement.  San Diego alleged that Salt Lake willfully infringed its registered COMIC-CON and COMIC CON INTERNATIONAL marks.

Salt Lake CC defended primarily on the ground that “comic con” is a generic term for comic book conventions.  The convention organizers cited to the names of various cities’ comic conventions to show the term is used generically—Motor City Comic Con, New York Comic Con, Denver Comic Con, and Emerald City Comic Con, among others.  Salt Lake CC also pointed to the usage of “comic con” in media to generically refer to a type of convention.

A sampling of the various Comic Cons pointed to by Salt Lake CC as evidence of generic use.

Throughout the case, Salt Lake CC worked to rally fans behind the view that “comic con” belongs to the public.  Eventually, Salt Lake CC’s tweets, Facebook posts, and press releases about the case prompted the federal judge to issue a gag order.  The order temporarily prevented Salt Lake CC from commenting on the case, and restricted their ability to republish public court documents.  The order was appealed to the Ninth Circuit and ultimately vacated on First Amendment grounds.

At trial, San Diego CC presented its Comic Con to the jury as a brand.  Through surveys and other evidence, San Diego CC convinced the jury that Comic Con is not a generic term for a type of event.  Instead, San Diego argued, it operates as a source designator for the San Diego convention.

The Jury found that Salt Lake CC’s use of “Comic Con” infringes on San Diego’s registered marks.  The infringement, however, was not willful according to the jury.  Thus, despite San Diego’s request of $12 million in damages, they were awarded only $20,000 for corrective advertising.  Post-trial motions will likely be filed, and the case may be appealed to the Ninth Circuit.  But at least for the time being, it seems Comic Con is (officially) off limits to event organizers without a license.  However, I suspect (unofficial) uses of the term will continue.

Many of us have been eagerly waiting to see whether the Supreme Court would consider Google’s potential genericness.

As Martha explained, the case began in 2012, after petitioners Chris Gillespie and David Elliot attempted to register hundreds of web domains that included the word “Google” together with a variety of different people, products, and brands (i.e., googlestarbucks.com).  Google objected to the registrations, and Elliot filed a complaint (joined by Gillespie) in federal district court.  Elliot and Gillespie argued that “google” had become a generic term due to its common use as a verb.  The district court ruled against Elliot and Gillespie on summary judgment.

On appeal, the Ninth Circuit affirmed the lower court’s opinion.  As Tucker discussed recently, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  The court clarified that the mere act of using the term as a verb does not render the mark generic unless it is used to refer to a type of good or service (i.e. an internet search generally).

Without comment, the Supreme Court denied Elliot’s and Gillespie’s petition for review.  (Notably, of the 7,000-8,000 petitions filed each year, the Supreme Court grants and hears argument in only about 80 of them.)

While Google is surely celebrating the Supreme Court’s refusal to hear the case, Band-Aid, Xerox, and Rollerblade are cheering right along with them, while cellophane, aspirin, and thermos look on with envy.

Last week the U.S. Court of Appeals for the Ninth Circuit issued a significant opinion on the topic of genericness, Elliott v. Google, Inc., No. 15-15809. The opinion affirmed a federal district court’s grant of summary judgment that “GOOGLE” trademark registrations (Reg. Nos. 2884502, 2806075) are not subject to cancellation for genericness.

Genericness a.k.a. “genericide” occurs when the public appropriates a trademark and uses it as a generic name for a particular type of goods or services, irrespective of the source of those goods or services.  Once a mark becomes generic, it is no longer subject to trademark protection. Examples of trademarks that became generic include aspirin, thermos, cellophane, and escalator.

This case arose out of a domain name dispute back in 2012, when the plaintiffs Chris Gillespie and David Elliott had attempted to register hundreds of web domains with the word “Google” such as “googlebarackobama.net” and “googledisney.com” Unsurprisingly, Google was not pleased, and filed a complaint with the National Arbitration Forum, requesting that the men transfer the domain names to Google pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP).  Google prevailed in the UDRP proceeding, and Gillespie and Elliot were ordered to transfer the domain names to Google. Shortly thereafter, Gillespie and Elliot (collectively “Elliot”) filed a complaint in federal court in Arizona, seeking cancellation of the GOOGLE trademark registrations.  The district court granted Google’s motion for summary judgment that its trademark registrations were not subject to cancellation for genericness.

Elliot argued, both at the district court and on appeal, that “google” had become a generic word for searching on the internet.  In particular, Elliot argued that a majority of the public understands the word “google,” when used as a verb, to mean the indiscriminate act of searching the internet without regard to the search engine used. Further, Elliot argued that verb use constitutes generic use as a matter of law.

The Ninth Circuit firmly rejected Elliot’s arguments on two grounds: “First, Elliott fails to recognize that a claim of genericide must always relate to a particular type of good or service. Second, he erroneously assumes that verb use automatically constitutes generic use.”

First, the court firmly rejected Elliot’s argument that the genericness inquiry must be framed as whether the relevant public primarily uses the word “google” as a verb for the indiscriminate act of searching the internet.  Instead, the court held, the claim of genericness of the word “google” must be made with regard to a particular type of good or service, i.e., a generic word for internet search engines generally.  Specifically, the court explained the following:

[W]e take this opportunity to clarify that a claim of genericide or genericness must be made with regard to a particular type of good or service. . . . But here, Elliott claims that the word “google” has become a generic name for “the act” of searching the internet, and argues that the district court erred when it focused on internet search engines. We reject Elliott’s criticism and conclude that the district court properly recognized the necessary and inherent link between a claim of genericide and a particular type of good or service. . . . [T]he Lanham Act specifies that the relevant question under the primary significance test is “whether the registered mark has become the generic name of [certain] goods or services.” In this way, the Lanham Act plainly requires that a claim of genericide relate to a particular type of good or service. . . .

If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “generic when used to describe a product made from the tusks of elephants.” This is not how trademark law operates: Trademark law recognizes that  a term may be unprotectable with regard to one type of good, and protectable with regard to another type of good.

Second, although Elliot presented evidence that the mark GOOGLE is used as a verb among the general public, the court held that “verb use does not automatically constitute generic use.”  The court held that even if the general public uses the word “google” as a verb, it is only a generic use if the public is referring to an internet search generally.  If the general public uses the word “google” primarily to identify a search on the Google search engine, the GOOGLE mark still serves a source-identifying function and its use as a verb is not generic.  The court also set forth a “discriminate” / “indiscriminate” distinction to evaluate verb usage of trademarks, stating that “an internet user might use the verb “google” in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.”   The court explained that much of Elliot’s admissible evidence were only examples of verb usage–which is not automatically generic use–without showing whether that verb use was discriminate or indiscriminate.  For example:

Elliott purports to offer an example of generic use by T-Pain, a popular rap music artist. But we will not assume that T-Pain is using the word “google” in a generic sense simply because he tells listeners to “google [his] name.” T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain’s inner thought process, we cannot tell whether he is using “google” in a discriminate or indiscriminate sense. In this way, many of Elliott’s admissible examples do not even support the favorable inference that a majority of the relevant public uses the verb “google” in a generic sense.

The court also tied in an oft-used Kleenex example to further emphasize that the type of semantic usage of a mark by the public is not dispositive of genericness:

We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for “a Kleenex tissue,” it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for “a Kleenex.” Instead, the party bearing the burden of proof must offer evidence to support a finding of generic use.

What do you think about this decision?  Google, Inc., is likely celebrating a big win for its GOOGLE mark–one of the most valuable marks in the world.  It’s also a helpful decision for many famous brand owners, who, as an ironic consequence of their own success and ubiquitous use by the public, are also put at risk by genericness challenges (e.g., Kleenex® facial tissues, Band-Aid® adhesive bandages, Xerox® photocopiers, etc.).

Each of the seasons has its own soundtrack to signal its transition. Spring is symbolized by the chirping of robins and sparrows. The sound of the grill and the splashing in the pool announces the arrival of Summer. Unfortunately for Winter, it got the short end of the stick. Nothing says Winter is on its way like the sound of you, your loved ones, and your co-workers, reaching for a tissue and blowing their nose.

Those in the know on matters of the nose will take note: you reach for a tissue and not necessarily a Kleenex®. The owner of the Kleenex® brand has fought hard to keep its trademark from becoming generic, even purchasing advertisements to educate consumers on this distinction, like the ad reproduced below reminding consumers that “‘Kleenex’ is a brand name and should always be followed by an ® and the word ‘Tissue.'”

Kleenex - Trademark Usage Ad

The effort is ongoing, but Kleenex® continues to be a valid registered trademark. Even if Wikipedia (currently) states otherwise.

But the Kleenex® brand has more than one legal battle on its hands. This battle is not with consumers but instead with the U.S. Trademark Office. In May, Kimberly Clark (the owner of the Kleenex® brand) filed a trademark application for a product packaging configuration for facial tissue. The mark is described as “the configuration of a folding container for facial tissues” and is displayed in the drawing below:

Kleenex - Drawing

The actual product packaging, closed and open, looks like this:

Kleenex - Specimen

The Examining Attorney has refused registration, finding that the claimed mark is functional. We’ve discussed the limits imposed by the functionality doctrine a number of times at Duets Blog, wondering aloud whether 2015 might be “the year of functionality refusals.” In short, a claimed mark is functional if it comprises matter that, on the whole, is essential to the use or purpose of the product, if it affects the cost or quality of the product, or if it would put competitors at a significant non-reputation-related disadvantage.

In support of the refusal, the Examining Attorney identified a number of utility patents owned by Kimberly Clark for facial tissue dispensers and packaging. Interestingly, none of the patents appear to cover this particular design, but instead address older versions of packaging, or a particular component that allows the packaging to dispense only one tissue at a time. The Examining Attorney also relied upon statements from advertisements for the goods, which claimed that the packaging is “slim, stylish and easily fit in a backpack or back pocket.”

The Examining Attorney’s evidence supports a prima facie case, but doesn’t appear bullet proof. Yet at first glance, the packaging appears to be nothing but functional. The packaging allows the tissues to be carried in a compact container, making it amenable to travel. The flat packaging is likely the most beneficial shape, making it easy to fit in pockets or bags. The folding feature is a simple and easy way to close the package, keeping contents from falling out, but still being readily accessible by the consumer. Overall, it looks like an uphill battle.

No response has been filed yet, but perhaps Kimberly Clark will find a way to overcome the refusal. Like the common cold, we’ll just have to wait it out.

Now that Thanksgiving is over, Americans across the country are taking some time to relax, reflect, and digest. I know I will be doing all three, after enjoying a wonderful Thanksgiving Day surrounded by family, friends, food, and, yes, trademarks.

Even in the midst of one of the most significant holidays I still couldn’t quite get away from trademarks. While we weren’t discussing res judicata, trade dress protection, or comparative advertising, our discussion still underlined a very important (and sometimes overlooked) principle of trademark law: context is everything.

Context is what kept consumers being from confused yesterday as to whether the Lions were doubling up the Chicago Bears, the California Golden Bears, the Baylor Bears, or the Hershey Bears. The NFL association, uniforms, use of other wording, and many other contextual clues all contribute to consumers ability to distinguish between the various Bears.

Context is also what turns an otherwise descriptive name into a distinctive trademark. “Apple” is merely descriptive of food products, but for computers that descriptive meaning is lost. And while the phrase “Thanksgiving Day” is a holiday that is not likely registrable for a number of goods, when used in the context of pet food, it’s distinctive and registered:

And context is very important for those brands fighting off potential genericide, i.e., when a brand name loses its trademark significance by becoming the generic term for the goods. When you were around the dinner table, did you ask for Cool Whip® or non-dairy whipped topping? Jell-O® or gelatin? Did you cook your casserole in a Crock Pot® or a slow cooker? And when your guests went home with leftovers, did you put them in Tupperware® or containers? And with the cold weather, did you make sure to put on your Chapstick® or did you use lip balm?

Yes,  context is everything. It matters for brands and it matters for a lot of things your family and friends might say at the dinner table during a long, stressful holiday. And sometimes context is as simple as geography. The issue that brought all of this up for my family was whether some of the dishes we were preparing was a “casserole” or a “hot dish.” Being from Iowa, I was obviously on Team Casserole. As you can probably infer, we had someone from up Nord representing Team Hot Dish. But again, context is everything. And in this context, whether it was hot dish or casserole, it was still Thanksgiving.

Hope you all had a Happy Thanksgiving!

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 is the first Australian to win the Masters, and “putt-putt” golf is a brand of miniature golf, not a generic designation for a type or category of golf game. In fact, I was surprised to learn that the brand is subject to federally-registered trademark rights, and for much more than mini-golf services, see here, here, here, here, and here.

In the Putt-Putt v. 416 Constant Friendship decision, the court granted summary judgement in favor of Putt-Putt’s federal and Maryland State trademark infringement and unfair competition claims. The court basically found it unnecessary to hold a trial in order for Putt-Putt to win. Not only did the court find there to be infringement as a matter of law, it also found Putt-Putt to be a “strong” trademark.

Why the surprise? I grew up using and hearing the term as a generic reference, not a brand. Apparently 416 Constant Friendship couldn’t muster up enough evidence to even create a genuine issue of material fact on the question of validity. Survey evidence would have been interesting, but there was no mention of this type of evidence, the registrations appeared to carry the day on validity.

What is your experience with this term, brand or generic? And, would you place Putt-Putt on the Genericide Watch?

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 the genericide watch.

This interesting hot dog story from Southwest Airline’s Spirit magazine caught my eye this past month, for obvious reasons, as a trademark type. And, I suspect the legal team over at Sara Lee Foods who is responsible for the protection of the more than fifty-year old Ball Park brand and trademark cringe when they see this kind of misuse. But, I’m also guessing at least some marketing types would view this kind of “free publicity” as marketing nirvana without serious regard to the risk of trademark genericide.

Actually, this kind of media misuse is not too surprising when the brand owner adopts an all lower case style. It appears this visual identity change began for Ball Park, at least as early as April 2000, although the amendment to the original all capital letter rendition of the mark was not filed until April 2004), as shown here in the oldest registration existing for this mark (note the defensive “brand” reference built right into the amended mark): 

If you’re going to go all lower case, it’s probably a good idea to add the brand reference to the mark, but for a mark like this, it is still a risky experiment, at least from a legal point of view, since the lower case style probably encourages the kind of misuse shown in the Spirit article and also tends to confirm the questions about whether the words actually function more as a brand or more as a generic category term that is free for any competitor to use.

It is worth remembering that it is the understanding of the majority of the relevant consuming public that decides the brand/generic question, so the importance of properly educating the consuming public cannot be stressed enough.

Perhaps all this helps explain the more recent move by Sara Lee to the use of leading capital letters in the current Ball Park logo:

Putting on my consumer hat for a moment, I actually like the look and feel of the safer option anyway, don’t you?

A few years ago, the world was introduced to arguably the creepiest fast food mascot of all time: The King.  For many of us, this introduction came courtesy of a frightening commercial suggesting that we "Wake Up With The King."  Over the following years, TK expanded his popularity.  He went from our bedrooms to our football fields (other examples here and here).  Eventually, TK became less about burgers, and more about celebrity.  He became more than a mascot, inviting (fake) controversy and spawning imitators.  As a matter of fact, he has become immensely popular with 114,000 My Space friends.

So, the moral of the story is that Burger King has done an incredible job of product promotion here and companies should do whatever they can to establish their symbol as a pop-culture icon, right? 

Maybe.  Consider the following:  what if TK eventually becomes such a pop culture icon that he no longer represents Burger King.  Stated differently, what if the public appropriates TK for its own uses such that he can no longer be considered an indicator of source for Burger King’s goods and services?  Could we be looking at the first case of trademark regicide, as opposed to trademark genercide?  I would say that we have a ways to go at this point.  Nonetheless, I think it’s a realistic possibility given today’s viral marketing environment.    

   

Yellow Book USA, Inc. has embarked on a marketing campaign telling consumers to “Yellowbook  It” when they need to search for something.  Although Yellow Book USA, Inc. does not own a federal registration for YELLOWBOOK, its does use the ™ symbol behind the term on its Web site to signal to consumers that it is a trademark.  From a marketing perspective, having consumers use your trademark as the term to signify searching a directory certainly increases the visibility of the brand.  On the other hand, from a trademark perspective, when consumers start using a trademark to identify to a specific thing or action, it signals the end of all trademark rights.

The function of a mark is to identify and distinguish the goods or services of one seller from those sold by another seller.  A “generic” term does not identify and distinguish goods or services.  A mark may be generic for one product but not for another.  For example, APPLE is generic for the fruit of the apple tree, but not for computers, and CATERPILLAR is generic for the larva of a butterfly, but not for earth moving equipment.  Furthermore, a mark may become generic if the owner fails to properly enforce its rights in the mark or educate the public on the proper way to use its mark.  This occurrence is known as genericide and DuetsBlog has discussed this phenomenon before.  Therefore, because generic matter does not identify and distinguish goods or services, it possesses no distinctiveness and falls on the unprotectable side of the spectrum of distinctiveness.

Yellow Book USA, Inc.’s strategy is reminiscent of the issue Google faced.  However, Google did not embrace consumers referring to searching the Internet as “Google it.”  Rather, Google aggressively went the other way educating consumers on the proper use of its trademark.  Today, Google has included trademark use guidelines on its Web site, which include the following rule: “Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search.”

Therefore, while Google and other companies are trying to avoid genericide, Yellow Book USA, Inc. seems content with running full speed towards it.  I assume they are aware of the risk they are taking, at least I hope so.