Risk of Trademark Genericide

Las Vegas has a welcoming brand, probably best known by the nearly decade old famous and iconic slogan: What Happens in Vegas Stays in Vegas.

LVCVA owns it for gaming machines, slot machine services, and “promoting the Las Vegas, Nevada area as a destination for leisure and business travelers.”

If you’re not aware of the origin and the connection to Minnesota, here you go.

Las Vegas has welcomed the SHOT Show for many years, so here we are, once again, connecting with our many brand-toting friends in the industry.

Although I haven’t yet noticed evidence of it on the streets or the strip, the famous WHIVSIV slogan is reportedly back from its brief hiatus.

MGM Resorts’ Aria appears to be building on the meaning of Vegas with a fairly new slogan of its own that interestingly employs the term being used as a verb:

Given all the other places we’ve seen and reported on brandverbing to date, and now that we know it happens in Vegas too, only time will tell if it stays in Vegas:

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

All that said, Aria’s This is How We Vegas, should not be confused with This is How We Hotel, much less, This is How I Vegas, for sure, or even this one either:

 

We’ve been writing about the COKE ZERO trademark for nearly a decade now, noting in 2014:

“[I]t will be worth watching to see whether the [TTAB] finds that ‘ZERO’ primarily means Coke or just a soft drink having ‘no calories, you know, a drink about nothing . . . .’”

Turns out, in May 2016, Coke obtained a favorable decision from the TTAB, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

With that victory in hand, we then questioned Coke’s thinking in launching obvious generic use of ZERO, welcoming Coke Zero to the Genericide Watch, given this categorical and non-brand use:

Then, two months ago, the CAFC decided — on appeal — that the TTAB got it wrong, ruling it:

“[F]ailed to consider whether consumers would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages – i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.”

We’re now back to the question we asked in 2014: “[I]s ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?”

As to the next steps, the CAFC sent the case back to the TTAB, instructing it to “examine whether the term ZERO, when appended to a beverage mark, refers to a key aspect of the genus.”

TM types, is Professor McCarthy right that the CAFC ruling makes it too easy to find genericness?

I’m left wondering, given the floodgates that have opened up to other beverage brands also using ZERO as a generic category term for “no calories” or “no sugar” — is fighting for ZERO worth it?

 

 


 

 


Will Coke continue to fight for ZERO as a trademark? Or, should it make better soda instead?

How can The Coca-Cola Company even keep the trademark pursuit of ZERO going, when it already appears to have made the choice of making a better soda through its independent unit, Honest?


On the heels of discussing trademark genericide through the Anything is Popsicle prism yesterday, let us turn our attention back to Velcro, who is at it again, this time making a genericide sequel.

The sequel is called “Thank You for Your Feedback — Don’t Say Velcro.” Like any sequel I’ve ever seen, I’m not feeling Velcro’s second attempt either, so Napolean Dynamite, please, don’t do it.

What the Velcro sequel does offer are many crowd-sourced generic alternatives to Velcro’s “hook and loop” preference. No thanks, Velcro says it’s sticking with its chosen noun and generic term.

The thing is, Velcro doesn’t get to decide this one. What I’d really like to see from Velcro next time, is whether the videos moved the needle on whether Velcro has at least 51% brand meaning.

Nearly everyone in the IP community is talking about the hilarious viral Velcro music video released last week. Hat tip to Patently-O, Martha, and Brett. The “behind the scenes” video is here.

We’ve spoken before about nervous trademark types, behind the scenes doing their level best, and taking steps to try to avoid unwanted genericide of the trademarks they are charged to protect:

“Nervous, I say, because these types of advertisements frequently are designed to help prevent unwanted genericide of a trademark. The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.”

Velcro has been on our Genericide Watch list, and Wikipedia notes it is a trademark frequently used as a generic term. So, hats off to Velcro for letting their attorneys’ hairs down on this one.

And congrats to Penn Holderness and the rest of the WalkWest creative team, for helping give the impression in the Velcro video that at least some nervous lawyers can still have a sense of humor.

Julie Barry, Director of Global Brand, Velcro Companies, explained the Velcro video in this way:

“We’re here in North Carolina, shooting our ‘We are the World’ video which is an educational video explaining to folks details about the Velcro brand trademark and why it’s important that people refer to the mechanical fastener as ‘hook and loop.'”

Actors posing as lawyers, flanked by real Velcro lawyers, appear agitated at times, imploring listeners to not say Velcro, but instead “hook and loop,” or “our trademark will get killed,” “we’ll lose our circle ®,” and “our trademark goes away.” At the same time, Velcro is fully admitting the “First World” melodramatic nature of this worst case scenario and unfortunate situation.

Maybe it’s just me, but I’ve never heard of a “hook and loop” fastener before now, so the video certainly accomplished that bit of education. I’d be surprised, however, if the video moves folks to embrace the stiff and clunky six syllable “hook and loop fastener” generic phrase, over Velcro.

Perhaps what follows is one small example of where I’ve captured “at least some of the sparks” spinning from my mind’s eye, so please bear with me, but as I watched and listened to the Velcro video more times than I’d like to admit (kind of an addictive musical hook), the rapid repetition of “hook and loop” triggered thoughts of “hook and ladder,” then “chutes and ladders,” and how ladders can lead up to rewards while chutes can take you for a ride straight to the bottom:

Given those stark alternatives, given how a brand that deteriorates to the point that its primary meaning is perceived to be more generic than it is perceived a brand (is not a brand at all, under the law), and given a trademark owner’s understandable desire to try and influence and build up the primary brand meaning among the relevant consuming public, it’s worth asking whether the humorous Velcro video helps to move that critical needle. In other words, does it act as a ladder?

We’ve cautioned before that a brand designed to launch an entirely new category must also spend valuable time and effort in creating and donating to the public, an acceptable generic term that the public easily can embrace, so when the applicable patents expire and exclusivity is lost, the trademark doesn’t travel straight down the chute to genericness:

Brand owners launching a new category of product or service do well to design a simple generic category name too.”

“Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.”

Is “hook and loop” going to get the job done? Will it help prevent a death by a thousand cuts?

“Hook and loop” is certainly more of a ladder, even a rescue “hook and ladder,” than the extreme generic identification of goods found in the first Velcro trademark application from 1957:

“NOTION-NAMELY, A SYNTHETIC MATERIAL SOLD IN RIBBON, SHEET, OR PIECE GOODS FORM, SAID MATERIAL HAVING COMPLEMENTAL PARTS WHICH ADHERE TO EACH OTHER WHEN PRESSED TOGETHER AND ADAPTED FOR USE AS A CLOSURE, FASTENER, OR BUTTON FOR CLOSING GARMENTS, CURTAINS, OR THE LIKE”

And, unlike Rollerblade who seriously delayed in donating a bite-size generic category term to the general public (“in-line skates”), Velcro seems to have been fully invested in “hook and loop” going all the way back to at least as early as 1975. Query whether the entry of the “hook and loop fastener” phrase closely tracks the lapsing of the patents (as the video mentions) “forty years ago.” If so, perhaps it still came twenty years too late?

Either way, I’m seriously wondering whether Velcro’s tongue-in-cheek reference to a “scratchy and hairy fastener” might be more easily and readily embraced by today’s general public as the generic alternative to genuine Velcro branded products.

I’m also left thinking that the video begs the question of who is the intended audience. In other words, who are the “folks” that Velcro would like to reach with this creative video?

I’ve always thought of Velcro as more of a B2B brand, but in researching this post, I see that I’ve missed some of their general consumer products, like general purpose straps, general purpose plastic bagschildren’s toy blocks, adhesive cementmedical splints, and hair rollers, for example.

Contractual efforts are probably the most effective way of controlling how the Velcro trademark is used by those who purchase authentic product from Velcro and incorporate Velcro fasteners into their own consumer products. And, when it comes to competitors who might be inclined to misuse the Velcro trademark, the cease and desist letter, and/or lawsuit is probably most effective.

So, perhaps the general public is the intended audience of this educational effort. If so, I’m not sure the effort anticipated how many in the general public don’t like to be told what to say and do.

Moreover, let’s face it, the video’s referenced “trademark laws being broken,” aren’t being broken by the general public speaking about the brand or a competitor’s alternatives to the brand. Nor are they being broken by the media who reports and writes about all kinds of things and happens to use “velcro” in lower case and in a generic sense.

I do seriously hope the video will strike the right chord with these important audiences, as they will have a significant impact on whether the brand is able to climb the ladder of distinctiveness and fame or slides down the chute to genericness.

For those still with me and wondering, while I’ve questioned the seriousness of the risk for genericide when intentional and controlled brand-verbing is involved (and the 9th Circuit’s recent decision affirming the survival of the Google trademark appears to validate the difficulty of bringing a trademark all the way to the ground zero), the Velcro mark seems different, as the generic uses don’t involve verbing, they go straight to nouning and naming what the product is, by the way, a far more efficient name for a “hook and loop” or “scratchy and hairy” fastener.

Which of the present options are most likely to roll off the tongues of those who matter?

VirginiaBrandHam

Every once in a while, the word “brand” appearing on product packaging surprises me, because my earlier understanding of the word preceding it spells generic, not brand. Just like the above.

Shopping in Whole Foods this past weekend, the above shown VIRGINIA BRAND designation called out like a neon sign from behind the glass of the meat counter, so I had to capture the image.

When speaking about the risk of trademark genericide, I’ll often refer to nervous trademark types behind the scenes influencing packaging to help educate consumers against a generic meaning.

Some of my favorite examples are Band-Aid® Brand Adhesive Bandages, Kleenex® Brand Tissue, and Jell-O® Brand Gelatin Dessert. We’ve referenced many others in our Genericide Watch.

Yet, there was something different about the VIRGINIA BRAND designation. First, the typical ® federal registration symbol is missing, as most brands worried about becoming generic are federally-registered. What’s more, as much as I love VIRGINIA, the name of a State simply lacks the inherent distinctiveness of the previously mentioned coined words that were made up to serve the specific purpose of serving as trademarks. Coined marks are uniquely susceptible to degeneration through genericide, but inherently generic wording begins and ends there.

To me, Virginia was a type or category of ham, either coming from Virginia or perhaps employing a common type of smoking or curing that originated in Virginia, either way generic, not a brand.

Turns out, VIRGINIA BRAND is a federally-registered trademark for packaged prepared meats, but it appears to be owned by White Packing Co., Inc. of Fredericksburg, Virginia, not Wellshire Farms West of Palm Coast, Florida, the latter trademark owner having used this label specimen to federally-register the WELLSHIRE logo (note the small print indicating MADE IN MARYLAND):

VirginiaBrandLabel

When lots of different and unrelated brands of ham offer Virginia and/or Virginia Brand ham, say Boar’s Head, Sara Lee, Black Bear, Eckrich, can Virginia and/or Virginia Brand really be a brand?

VirginiaBrandHamSpecimen

In other words, if anyone can sell their version of “Virginia Brand” ham, doesn’t that turn the notion of “brand” on its head, or at least on a boar’s head?

Just because someone calls a duck a goose, doesn’t make it a goose, right?

And, in terms of geography, just because someone calls its ham Virginia, doesn’t make it a brand either (especially when it’s made in Maryland or North Carolina).

Let’s just say, I’m more than likely to be confused here. Anyone able to make sense of this brand conundrum? Perhaps an easy job for Dr. Seuss and his famous character Sam-I-Am?

In terms of consequences, might the Virginia Brand federal trademark registration fairly be considered deadwood, suitable for smoking your next Easter Dinner ham?

Before you answer the question posed in the title of this post, your initial question might be: What is an App-Based Ride Service?

The Minneapolis St. Paul International Airport is using a handy sign directing passengers on where to go to access their favorite one, does that help?

App-BasedRideSign

I’m thinking the designated area in the airport is where passengers can hail Uber or some alternative brand to Uber, as opposed to a traditional taxi and/or cab, right?

As you know, we love to write about signs, and the one above sparked a thought and reminder about the importance of a frequent topic on this blog: Brand owners launching a new category of product or service do well to design a simple generic category name too.

Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.

We covered this topic in the fitness tracker category too, so let’s not forget the insights we covered in: A Missed Step in Branding Fitness Trackers?

Why the concern about having a bite size consumer-friendly generic category name? Besides risking a loss of rights, taking this step can help avoid appearing on our Genericide Watch list.

So, back to App-Based Ride Services, what say our marketing types, does this name appearing on the sign accurately, efficiently, and generically name the category created by Uber?

Jawbone-UpI’ve been wearing one of these little guys on my wrist for almost a year now. Love it. The personal awareness it raises for me in the areas of sleep, diet, and activity, has been profound.

Can’t tell you how many times folks have asked, “Is that one of those fit bits?” “Nope,” I sometimes say lazily and admittedly without trademark rigor, “it’s a Jawbone, but same idea.”

Lazily because I think I’m tired of reminding folks that fitbit is actually a brand, not a generic, category name for a type of health tracking device, and Jawbone is a major competitor of Fitbit:

fitbitlogo

 

My Jawbone is pretty amazing. I’m probably not using all the bells and whistles available, but it automatically tracks my sleep and steps, and I’m easily able to record what I eat and do.

Meanwhile, back to the trademark point, my absence of trademark rigor might also be explained by my serious question of what the appropriate generic term is for this category of products.

So, taking a stroll through MOA with my daughter revealed this Lululemon sign, and more importantly, the answer to my question: “Fitness tracker” is or should be the category term.

lululemonsign

Yet, only steps ahead, as we passed Brookstone, it became apparent that Fitbit doesn’t appear to fully embrace the “fitness tracker” term, opting more broadly for simply “trackers”:

BrookstoneFitbitDisplayI’m doubting the USPTO will ever allow the term “trackers” as an appropriate generic term, it’s simply too indefinite. It does, however, allow “wearable activity trackers” and that category name was added to the USPTO’s Trademark ID Manual months ago in January 2016.

“Pedometers” has been around as a pre-approved goods identification within the USPTO’s Trademark ID Manual since April 1991, but that description, while accurate as to one feature, it seems under-inclusive overall.

“Wearable activity trackers” seems like a good one, but it hasn’t gotten a lot of traction yet, as it appears there are only 244 pending trademark applications using this term in the description of goods field, including this odd one for GARMARVR, filed by a Chinese company.

Hello, Garmin — another heavy-hitter in the “fitness tracker” or “wearable activity tracker” category — you might want to take note of that recently filed trademark application.

A review of Fitbit’s description of goods in its first trademark registration at the USPTO isn’t much help either, too much of a mouthful, even with the bracketed deletions from the original ID:

“Multifunctional electronic devices for displaying, measuring, and uploading to the Internet information including time, date, [ body and heart rates, global positioning, direction, ] distance, altitude, speed, steps taken [, ] * and * calories burned [, navigational information, weather information, the temperature, wind speed, and the declination of body and heart rates, altitude and speed ].”

Having said that, Fitbit’s most recent application includes a nice attempt at a bite size term capable of being embraced by the general public for this category of goods — “Personal fitness trackers” — but, the Examining Attorney contends even that is too indefinite, so stay tuned.

This whole discussion reminds me of a few points we’ve made multiple times here before, so let’s take a few more steps together down memory lane:

  1. When a new product category is being launched — as we learned from the Rollerblade example (taking an entire decade to come up with “in-line skates”) — creating a great brand name is obviously important, but it is just as important to also create a suitable generic category term for the public to embrace once inevitable competitors appear.
  2. When a brand’s visual identity utilizes and encourages an all lower case style and format, as fitbit does, it might find itself on our Genericide Watch some day.

What do you think? Is fitbit flirting with disaster by using its all lower case branding style?

Also, has it lost an early opportunity to donate a suitable generic category name to the generic public so it doesn’t have to relinquish its trademark for that same purpose?

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?

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 Turtles, and Mega Pecan Turtles on the right?

DeMet’s apparently purchased the U.S. brand and trademark in 2007 from Nestle, and Nestle appears to have retained the trademark rights elsewhere. This is a great example of the divisible and territorial nature of trademark rights. Here is a link to the USPTO records for the incontestable federal trademark registration for TURTLES.

So, how incontestable are the TURTLES trademark rights in the U.S. anyway? Genericness is still a soft underbelly for a federally registered trademark that has achieved incontestable status, and if such a challenge is successful, the trademark is no longer proprietary — it loses all exclusivity and becomes part of the public domain for anyone to use, including direct competitors.

The photos above are somewhat trademark validating for DeMet’s maintenance of exclusive rights in the TURTLES trademark — the one on the left especially (because it seems to acknowledge the candy is an imitation, not the real deal). Yet, unfortunately for DeMet’s there certainly seems to be no shortage of generic references to TURTLES as a type of candy, as opposed to a brand of candy (for example, many recipes here and here, and candy for sale herehere, here, here, here, and here.

And, how difficult do you suspect it will it be for DeMet’s to clean up this mess with this little gem lingering on it’s website FAQ page:

Q. What are TURTLES®? A. TURTLES® are chocolate confections that are shaped like Turtles. They consist of milk chocolate, caramel and some variety of nuts.”

Well, some things are better left unsaid (or, at least better-said), especially by the trademark owner. So, what do you think, is the TURTLES trademark at risk of degenerating into a generic term for a type of pecan/caramel/chocolate candy? Or, despite its reluctance for speed, has this turtle already crossed the finish line?

Last, any predictions on the fate of this recently filed “Sea Turtles” trademark application filed by an individual in Wilmington, North Carolina, for candy?

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" they are a changing, or at least they’re seriously being challenged by some creatives and marketing types:

A couple of days ago I was reminded that the trademark verbing trend is not going away when I saw a light rail train in downtown Minneapolis fully encased in an advertisement for Cisco’s Flip video camera, asking consumers what its Silicon Valley neighbor Yahoo! Inc. used to ask in their advertising (Do You Yahoo!?), but of course, Cisco’s new and current use is tailored to Cisco’s Flip trademark, asking their consumers and potential consumers, do you flip?

 

Cisco is not only breaking the "rule" against "verbing" trademarks, but it also encourages the use of the Flip trademark as a noun too, in advertising telling prospective customers to "Find Your Flip," and then asking them to decide "Which Flip is right for you?"

Smartly, I believe, it also has filed a trademark application to register the Do You Flip? tagline and question (see point three in listing of how to manage the risk of genericide).

Although there is certainly no shortage of recent trademark genericness decisions, they focus on inherently generic marks, ones that started out generic, not ones that have become generic over time through misuse or changes in the English language.

The poster child for this type of genericness decision is "ScreenWipe" for wipes used to clean computer screens. Of course, vigilance to trademark use guidelines and other trademark "rules" is imperative when you’re on the border of the genericness or descriptiveness lines or the suggestiveness and descriptiveness lines, along the Spectrum of Distinctiveness, so, not a good idea to identify your ScreenWipe product as "a . . . wipe . . . for . . . screens."

I’m happy to be enlightened or steered in the right direction, but I can’t think of the last time an arbitrary, coined, or fanciful trademark degenerated into an unprotectable generic term, landing in the Trademark Graveyard, through the process known as trademark genericide. Can you?

Given how prevalent trademark and brand verbing is, why haven’t we seen any recent trademark genericide examples? Or, are they just on the horizon?

How realistic is the risk of trademark genericide anyway?