Generic Use’s Effect on Trademarks

A trademark on a product name is important because it distinguishes one product from another, like one brand of hair conditioner from another. In order for a mark to become a trademark, it must be unique — it cannot be generic (unable to distinguish one product from another) or descriptive (merely describing the product itself. However, there is a pitfall in trademarks in that once unique marks can acquire generic or descriptive status, and thereby lose trademark protection. A trademark can acquire generic or descriptive status either by the trademark holder using the mark in a generic or descriptive manner, or if the product gains such a mindshare with consumers that the trademark is used by consumers to describe the whole class of products. Famous examples of these processes include escalator, aspirin, and zipper — all were once trademarks, but have since come to be used to describe the whole class of products regardless of the manufacturer. Other examples people might point to of this process include Xerox, Jell-o, or Google; however, it is also worth noting that those are also the names of the companies that product the product or service, and while consumers may use the names to describe the whole class of products, they still distinguish the companies that produce those products and services. Limited generic or descriptive use of a trademark may not be enough to eliminate trademark protection. A company called Timelines, Inc. is currently in federal court in the Northern District of Illinois, having sued Facebook over its use of the mark “Timeline”, which Timelines argues it owns the trademark on. Facebook recently lost a motion for summary judgment, where it argued that Timelines had used the “Timeline” mark in a generic or descriptive way, and that Facebook’s use of the term was fair use. The court found that while Timelines had used the mark in the past in a generic way, it was not enough to render the mark generic, and that it had acquired meaning as a brand with Timelines’ users. Read more: http://www.chicagoiplitigation.com/2013/07/articles/summary-judgment/limited-generic-use-does-not-render-a-mark-generic

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