Last week I attended a Continuing Learning Education presentation at the Northern Kentucky Chase College of Law. One of the presenters, Alan Datri, resident of the Memphis Bioworks Foundation and former senior consultant with the World Intelligent Property Organization [WIPO], made a thought provoking statement.
He said: Trademarks should only be used as adjectives.
Think about that. According to Wikipedia, an adjective is a describing word, the main syntactic role of which is to qualify a noun or noun phrase, giving more information about the object signified. http://en.wikipedia.org/wiki/Adjective
The reservation of trademarks as only an adjectives prevents the trademark from becoming generic. Here is what the Trademark Examining Manual of Procedures says about Generic Terms. http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e6993.xml
1209.01(c) Generic Terms
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re Am. Fertility Soc’y, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.
When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. The disclaimer does not render an otherwise unregistrable generic mark registrable. See TMEP §§1213.06 and 1213.08(c).
The essence of the trademarks is that they are unique and they associated with a specific manufacturer or provider of the goods or services. Hence, when we hear ‘Just Do It’ we think of Nike, and when we hear iPhone we think of Apple. The tagline and product name is unique and we immediately identify the manufacturer.
Wikipedia site the following former trademarks as being generic. Aspirin, heroin, and thermos. http://en.wikipedia.org/wiki/Generic_trademark. Now, I am not going to expand on heroin, but let’s look at one of the other terms. ‘Take some aspirin for your headache.’ In that sentence, the word aspirin is used as noun. It does not actually mean the brand aspirin. Now let’s switch it up a bit. ‘Take some Bayer aspirin for your headache. ‘ The word Bayer is an adjective in the sentence and it references to the brand manufacturer Bayer. The use of the word Bayer as an adjective rather that than a noun, protects the trademark from being used as a generic term for all aspirins. It sounds knit picky, but think about it. It is a brilliantly simplistic way to protect a trademark from becoming generic.
Once a trademark is generic it cannot be protected. It has no uniqueness. It no longer references to the manufacturer or provider. It can lose its registration with USPTO. So, think about it. And, think about how you use your trademark!