Defending Trademarks

[CalMeacham]

This issue keeps coming up on the Board, most recently here: http://boards.straightdope.com/sdmb/showthread.php?t=432747
“Companies have to defend their copyright or it lapses”. The common wisdom, backed up by the horrifying examples of Aspirin, Cellophane, and Zipper. Steadfastly Defend It or Lose It.

But it’s demonstrably untrue, at least in most high-profile cases. “Coke” is used as a synonym for any soft drnk in large swatches of the South, yet Coca Cola doesn’t seem to be in danger of losing its signature nickname. I’d think that a challenge made to it could marshall a lot of evidence.

“Kleenex” is used as a synonym for “facial tissue” all over the place. “Xerox” is virtually a synonym for photostatic copy. “Band Aid” for Adhesive Bandage. And, more recentrly, “Google” for Internet search using a Search Engine 9or for the Search Enmgine itself). One could make an excellent case that these trademarks have been used so widely by the public that they’ve become generic.
But I seriously doubt that anyone ever will. And not because the folks behind Kleenex keep taking out those full-page ads in Writer’s magazines admonishing everyone to say “Kleenex-brand facial tissue”. (Ain’t gonna happen. The only place people write that way or speak like that is in copyright lawyer’s fantasies). It’s almost certainly because the companies are too large to screw with. And THAT, it seems to me, is the real mechanism retaining copyright.

So I don’t have much sympathy when Chrysler tries to nail a guy for using the name “Jeep” (Did they go after the people currently running "Popeye, fer cryin’ out loud?) or when Ralph Lauren goes after Polo magazine. They’re showing off their bullying muscles, and employing the REAl copyright defence – We’ve got deeper pockets and more lawyers than you, and we’re making our periodic high-profile case to remind everyone.

[R.P.McMurphy]

Try naming something/anything “Olympic” then sit back and watch your legal bills pile up.

[FatBaldGuy]

So, is there a question here?

[Otto]

So is there a question here?

Anecdotally, I recall during the Iran-Contra hearings some member of Congress reading a letter from the Xerox Corporation. The member of Congress had used “Xerox” to refer to photocopies in general and Xerox sent him a trademark defense letter.

[Otto]

@Spartydog

Try naming something/anything “Olympic” then sit back and watch your legal bills pile up.

That’s only if you’re gay. If you’re a police officer or a rat, you’re golden.

[RealityChuck]

No one has to defend their copyright. They have to defend their trademarks or risk losing them. Let’s not conflate the two.

@CalMeacham

But it’s demonstrably untrue, at least in most high-profile cases. “Coke” is used as a synonym for any soft drnk in large swatches of the South, yet Coca Cola doesn’t seem to be in danger of losing its signature nickname. I’d think that a challenge made to it could marshall a lot of evidence.

Coke has no control about people using the term orally – it’s free speech after all. Trademarks can’t be applied to what people say. It’s only when they’re written down that it comes into play. You can bet that all the places where people call a soft drink a “coke” don’t have that name listed on the menu.

“Kleenex” is used as a synonym for “facial tissue” all over the place.

Not in writing, or else they will get a letter from Kimberly Clark. Note that the important thing in a court case is the fact that Kimberly Clark wrote the letter – proving they are defending their trademark.

“Xerox” is virtually a synonym for photostatic copy. “Band Aid” for Adhesive Bandage. And, more recentrly, “Google” for Internet search using a Search Engine 9or for the Search Enmgine itself). One could make an excellent case that these trademarks have been used so widely by the public that they’ve become generic.

One could. But until someone wanted to push the issue, it’s not generic.

But I seriously doubt that anyone ever will. And not because the folks behind Kleenex keep taking out those full-page ads in Writer’s magazines admonishing everyone to say “Kleenex-brand facial tissue”.

Yes it will. The ads prove that Kimberly Clark is defending their copyright. Anyone wanting to use “kleenex” for a tissue cannot argue that the trademark has been abandoned. The law assumes you can’t always control how people use your trademark in informal usage, but it looks to see if the owner took reasonable steps to defend it.

quote]So I don’t have much sympathy when Chrysler tries to nail a guy for using the name “Jeep” (Did they go after the people currently running "Popeye, fer cryin’ out loud?) or when Ralph Lauren goes after Polo magazine. They’re showing off their bullying muscles, and employing the REAl copyright defence – We’ve got deeper pockets and more lawyers than you, and we’re making our periodic high-profile case to remind everyone.
[/quote]
Uh, no. Copyright protects the small individual creator far more than it protects big corporations. The real defense is that it belongs to the creator.

But you were talking about trademarks. And the real issue is why should someone else profit on a name a company spent years to establish?

[Steve_MB]

@CalMeacham

So I don’t have much sympathy when Chrysler tries to nail a guy for using the name “Jeep” (Did they go after the people currently running "Popeye, fer cryin’ out loud?)

The comics character was apparently there first.

[CalMeacham]

The comics character was apparently there first.

I know. The Jeep folks sternly deny that the vehicle got its name from the Popeye character , but I strongly suspect that’s where it came from (Cecil has debunked the “Jeep” = “GP” = “General Purpose” car)

But you were talking about trademarks. And the real issue is why should someone else profit on a name a company spent years to establish?

But I’m not talking about anyone profiting from it, or from trying to use a name someone else came up with. I’m annoyed when companies try to bring suit against others who were there first (“Jeep” and “Polo”) or protesting when the name is used in a work of fiction. It may be true that companies have no control over people’s speech, but they try to influence the use in writing, and the claim I always hear bandied about is that a trademark loses its identity when used in free speech – that, everyone tells me, is how Aspirin and Cellophane and Zipper lost control – not because someone else tried to profit from the originators’ use by stealing the name.

[Cervaise]

@Spartydog

Try naming something/anything “Olympic” then sit back and watch your legal bills pile up.

Here in Washington State, where we have the Olympic Mountains, this is not an issue.

[Acsenray]

@RealityChuck

No one has to defend their copyright. They have to defend their trademarks or risk losing them. Let’s not conflate the two.

The ads prove that Kimberly Clark is defending their copyright.

@CalMeacham

But I’m not talking about anyone profiting from it, or from trying to use a name someone else came up with.

“Someone else came up with” is related to originality. Originality is relevant to copyrights. Copyright law grants protection to creators of original, creative works.

Originality is not an issue in trademarks. Trademark law has to do with the use of a term as an identifier of the origin goods and services.

It doesn’t matter in trademark law whether the word “jeep” was first used in the Popeye cartoon, because that’s not the issue. The issue is the term “Jeep” as used as a brand identifier for motorized vehicles. Same with “Polo.” The point isn’t that the game of polo existed before Ralph Lauren started designing clothes. The point is that he is the first one to use the term “Polo” to mean “clothes, scents and other stuff I’ve designed.” It doesn’t matter, because people can continue to use “polo” to mean the game of polo without worry.

I would guess that the vast majority of trademarked terms are based on personal and geographic names. No personal or geographic name, by definition, can be “original,” because it already exists as a personal or geographic name.

I’m annoyed when companies try to bring suit against others who were there first (“Jeep” and “Polo”) or protesting when the name is used in a work of fiction.

People are allowed to use brand names in fiction. People are also allowed to complain about things that bother them. It’s a free world.

It may be true that companies have no control over people’s speech, but they try to influence the use in writing, and the claim I always hear bandied about is that a trademark loses its identity when used in free speech – that, everyone tells me, is how Aspirin and Cellophane and Zipper lost control – not because someone else tried to profit from the originators’ use by stealing the name.

It seems you are talking to people who don’t quite know what they’re talking about.

[RealityChuck]

@CalMeacham

But I’m not talking about anyone profiting from it, or from trying to use a name someone else came up with. I’m annoyed when companies try to bring suit against others who were there first (“Jeep” and “Polo”) or protesting when the name is used in a work of fiction. It may be true that companies have no control over people’s speech, but they try to influence the use in writing, and the claim I always hear bandied about is that a trademark loses its identity when used in free speech – that, everyone tells me, is how Aspirin and Cellophane and Zipper lost control – not because someone else tried to profit from the originators’ use by stealing the name.

You’re missing the point.

Trademark holders are required to defend their trademarks. If it can be shown that they allowed the use of their trademark for other purposes, then it becomes fair game. People can say “kleenex” for tissues or put it into a book, but if Kimberly Clark finds out about it, they are obligated by law to send out a letter protesting the point. If not, then someone can sell “Joe’s kleenex” and have a little bit more ammunition in any trademark case. The important thing is sending the letter, not stopping the writer from using the trademark incorrectly.

Essentially, if they don’t send a letter to person A who they know has used the trademark incorrectly, then person B can argue they don’t defend their trademark. How likely is this? It’s up to the courts, but it’s a lawyer’s job to preven person B from using that argument in court. It may make all the difference.

I don’t know the specifics of the cases of “cellophane” or “zipper,” but I’m betting the owner of the trademark did not defend their trademark – that the knew of instances of it being used generically and did nothing about it. (“Aspirin” is a special case – the trademark was put in to the public domain by the US Government during WWI to punish Bayer, a German firm.)

Look at it this way. You’re the trademark lawyer for Kimberly Clark. You hear about someone using it incorrectly, but decide not to bother to write the letter. Later, this is cited by someone wanting to use the name “kleenex.” They win. Where does that leave you?

[Canadjun]

@RealityChuck

(“Aspirin” is a special case – the trademark was put in to the public domain by the US Government during WWI to punish Bayer, a German firm.)

And it is still a trade mark for the Bayer brand of Acetylsalicylic Acid in Canada. Wander into a drug store north of the border and you’ll see lots of bottles of “A.S.A.”.