Trademark Infringement and Genericide

A generic trademark is the name of a product/service/brand name which is the actual name for the product/service/brand name. Examples include: APPLE for apples, or LAW FIRM for a law firm. A generic term that could even obtain secondary meaning will not help that term become eligible for trademark protection. The rationale behind this prohibition is that to allow a single business, entrepreneur or inventor, the exclusive right to the generic term would give them a monopoly and an unfair competitive advantage over other businesses. Imagine the first person to register APPLE being able to prevent all other apple pickers or fruit stands from using the term APPLE to sell apples.

Registered trademarks can become generic. This is a process called trademark genericide. Genericide occurs when the meaning of a registered trademark becomes associated with the category, or “genus,” of the product. As a result, the trademark can no longer identify and distinguish the source of the product that bears the now generic term. Some examples of genericide include: THERMOS, ASPIRIN and VELCRO.

In September, out of the U.S. District Court of the Southern District of New York, a federal judge ruled on a lawsuit brought by Tiffany & Co. against Costco Wholesale Corporation. Costco was using the terms TIFFANY and TIFFANY SETTING, as a description when selling some of their engagement rings. Tiffany & Co. owns multiple trademark registrations for these terms and brought suit on the basis of trademark infringement, unfair competition, trademark dilution, among other multiple claims. Costco responded by filing a counterclaim, arguing that TIFFANY and TIFFANY SETTING has become generic for a ring setting with six prongs. Thus, the public now associates the term TIFFANY simply as a six pronged solitaire diamond ring, and not as a diamond ring from Tiffany & Co.

When analyzing a potential trademark infringement claim, a judge or trademark attorney will look at factors given under the appropriate likelihood of confusion test used by that jurisdiction. While each jurisdiction contains their own nuisances with the test, they are generally similar across the board. While all the factors must be viewed as a whole, three of the more persuasive factors of the test are: (1) the similarities between the marks, (2) the similarities between the goods/services offered under the marks, and (3) evidence of actual confusion. In this case, the court was able to find that both factors weighed towards infringement as the marks were identical marks and used on identical goods (engagement rings). Tiffany & Co. was also able to submit evidence whereby customers at Costco became confused by whether Costco was selling genuine Tiffany rings or not, based off of the signage at Costco.

Further, anytime a business entity or individual is either a plaintiff or defendant in a trademark infringement or dilution law suit, survey evidence is crucial to the claim/defense. Tiffany & Co. was able to submit persuasive evidence that 9 out of 10 individuals associated the term TIFFANY as a brand identifier, rather than a generic term. This survey include over 450 men and women who were over the age of 21. In the end, the court ruled that the term TIFFANY was not a generic term for a specific type of ring setting, and awarded Tiffany & Co summary judgment on all of their claims.

This case goes to show that having a strong brand identity can assist your business in defending your federal trademark rights. Also, while surveys can be expensive to conduct, they are vital and necessary evidence in all trademark infringement cases, whether you are on the side of the plaintiff or defendant.

If you believe your trademark is being infringed or diluted by another, or you need to defend yourself against a suit, contact our trademark attorneys. Our Jacksonville trademark attorneys have experience guiding clients through the litigation process or advising clients whether use of a certain term would violate an existing trademark.

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