Does losing a trademark actually happen nowadays?

A couple recent news items caught my attention regarding trademarked items. First, lawyers for Jack Daniel’s sent a polite cease and desist letter to an author who published a book with a cover that looks much like a bottle of Jack:

http://news.yahoo.com/blogs/trending-now/jack-daniel-lawyer-cease-desist-letter-goes-viral-182734557.html

Second, there was recently a performance in North Korea by Disney characters, which Disney was quick to condemn:

Now in both cases we’ve got trademarked things being used in an unauthorized way. And the reason the lawyers are busy sending out letters is because of the idea (or fiction IMHO) that the trademark will be lost if they don’t.

Where does this come from? I know about kleenex and aspirin. But seriously, in the modern day? If I can open a restaurant and call it McDonald’s and just tenaciously hold out against a flood of lawyers I will somehow be entitled to that trademark? It doesn’t make sense to me. In this day and age, it’s easily possible to tell who’s the original owner versus who is riding the idea’s nuts. Is shame not enough to stop imitators? Is the business world so cutthroat and ruthless that blatant theft of ideas will occur if not for this silly “law”? It just seems like a strange game of capture the flag to me. If you can capture the flag (the trademark) you own it and it’s yours until some other jerk takes it away from you. That is of course unless you can outspend them in court. Is this really the case and is this going on all the time? And is there any push to reform this system so that it isn’t so arbitrary?

It becomes a problem when someone doesn’t defend their trademark. The intent is to prevent confusion by the public. If others use your trademark and it’s meaning becomes ambiguous, the trademark is no longer justified. So trademark owners must defend them against infringement.

I can’t cite a case, but I think the effort to defend a trademark counts in court.

It may happen all the time, but you wouldn’t know because if nobody’s defending the brand, it’s probably because nobody cares. In this day when brand seems tobe the biggest part of a product, if a brand is not being defended, it’s because nobody cares.

Plus, that is a valid argument in court; if you knew about the infringemnet for 20 years and did nothing, why are things suddenly different today? Why can’t things keep going the way they have for 20 years? If the loss to your brand did not bother you then, what is the damage now? (IIRC, a variation on “use it or lose it”.)

Rolls-Royce, for example was notorious for sending out threatening letters to anyone who described something as “the rolls-royce of…”

You’ve got it backwards. If people who are not the trademark owners start using the trademarked term or image without opposition, eventually it will no longer be trademarkable by anyone.

And similarly, the people at Xerox supposedly got up in arms anytime someone would “make a xerox” or “xeroxed” something.

I’m curious why I can google something with impunity.

Beyond Kleenex and aspirin, there are plenty of more modern examples: Sheetrock and Styrofoam to name two (I’ve also heard Hardi-plank used generically). As others said, if you don’t make at least a token effort to protect your mark, you’ll lose control of it.

Actually, Google has taken steps to try to prevent it:

It’s just not clear how effective their measures can be these days. A cease-and-desist letter might have some effect for a commercial publication. I doubt that they can tell private individuals to stop talking about “googling” stuff on blogs, message boards, Facebook, twitter etc.

Let’s try it:

I’m going to go google for some more background on duckduckgo …

I wonder if they sent a similar letter when Del Rey books published a book cover for Jack Chalker’s And the DEvil will drag you under, for which Darrell K, Sweet’s cover featured a bottle of (apparently) “Jack Daniels”, but which actually read “Jack Chalker”

The primary purpose of trademark is to prevent consumers from being confused.

Say I decide that I like (or dislike) Campbell’s soup. As a consumer it’s to my benefit to know that any soup that says “Campbell’s” on it is coming from the same source. I don’t have to worry about a confusing welter of different suppliers of soup all calling their product “Campbell’s”.

Trademarks aren’t established by someone getting there first and squatting on a name. They’re established by use. So Coke has a very strong trademark because it’s used worldwide for a wide range of different products. Anyone trying to use the name “Coke” for a product of their own is going to have to work hard to show that their usage wouldn’t confuse consumers.

On the other hand, say there’s an indie brand of soda sold only in Maine called “Donny’s Cola”. They could prevent someone else from selling soda in Maine called “Donny’s Cola”. But they probably couldn’t prevent someone in Florida from doing it. And they probably couldn’t prevent someone in Bangor from opening a restaurant called “Donny’s Joint”. Their trademark is weaker because the scope of their business is much narrower.

Exactly.

In New York City there are numerous establishments with a name on some variation of “Ray’s Pizza.” Despite the similarity in name, they are not all the same establishment. I find the situation needlessly confusing, but apparently none of them hold a trademark so, tough.

Essentially, people can use trademarked names in a variety of ways, including turning them into verbs. You can google something then xerox the printout after cleaning the screen with a kleenex, for instance.

The trademark holder is required to defend the trademark, but they can do this by merely sending a letter to the person using it (in general speech). If the infringement does not come to their attention, they are not required to do anything, but once they note it, they need to do something to defend it.

The response depends on the company. There’s a story making the rounds the past few days about Jack Daniels sending an infringement letter that merely asks the person to make changes in the future. By sending this letter, they have defended the trademark.

For other cases, you will usually get a far more stern letter about potential infringement, and, depending on the company, they may actually sue you for infringement. A suit tends to be the last option, though – no one is going to go to court if there’s any other options because what if they lose the trademark as a result?

In general companies these days are alert in defending their trademarks. Trademarks do lapse, but usually because the company went out of business.

I bet they did. Or maybe Del Rey got permission. You just didn’t hear about it because there was no Internet. For instance, Marvel Comics sued Hulk Hogan a couple years ago for using the name Hulk. People were up in arms – he’d been using the name for decades! How could Marvel think they could step in now and make him change his name? The answer – he’d been paying them for use of the name for decades. And then he stopped. (Yes, it was more complicated than that.) But it was only when the lawsuit got filed that a news story was generated.

–Cliffy

It’s too generic to be granted a trademark. Among the variations used, each at multiple unrelated sites in NYC are Ray’s Pizza, Famous Ray’s Pizza, Famous Original Ray’s Pizza, and World Famous Ray’s. None of them are famous nor are they the original Ray’s, which closed last year.

As to the OP, the Disney trademark is likely not recognized in North Korea, so they can do whatever they want. And they do.

Their legal position, whether the user is a commercial publication or a private individual is the same. The law does not allow the trademark owner to control all uses. It only allows them to stop infringement and dilution. And saying that you “googled” something is neither, regardless of whether you are a commercial publication or a private individual.

If “Ray’s” has been so widely used for unrelated pizzerias in New York City, it’s certainly possible that no New York City pizzeria can now obtain exclusive rights over the name. It’s also possible that if there are X number of Ray’s Pizzerias that have been around for, say 50 years, that they can each have some degree of exclusive rights, but just not superior to each other.

Or maybe they just didn’t have a good case. The description doesn’t sound infringing to me. And at first glance, the Jack Daniel’s case linked in the OP is most probably not infringing either, in my opinion anyway.

Everyone has been taking for granted that “Kleenex” has lost its trademark status.

In the United States, Kleenex is still a trademark of the Kimberly-Clark Corporation.
Walk down the paper products aisle of any store in the United States and you will find that the only products bearing the word “Kleenex” are made or distributed by Kimberly-Clark. On the other hand, walk down the pain reliever aisle of the same store and you’ll find dozens of products claiming to contain “aspirin” that have no connection to Bayer AG.

Side note: Midwest Express Airlines (now part of Frontier Airlines) started out as the corporate aviation department of Kimberly-Clark. After they became a regularly scheduled airline many people still (affectionately) referred to them as “Kleenex Airways.”

+1 to Alley Dweller

Kleenex is definitely still a trademark protected in the U.S., and so is Styrofoam. Aspirin is generic in many countries, but still held by Bayer in others. (They lost the trademark as part of the Treaty of Versailles after WWI.)

Webster’s Dictionary is another generic. Merriam-Webster publishes the most popular one, but other companies can too. That’s not a recent change though.

No company has the legal right to make you stop using their trademarks as generic words for a product. They can send you all the letters they want, and it doesn’t mean anything.

The only time a company has a legal right to stop anyone from doing anything is if you try to use a trademarked name in commerce. If you try to sell your own brand of Coke, or Ccoke, or any other cola product with a name confusingly similar to Coca-Cola, then you can be sued. But you aren’t going to be sued if you someone asks you for a coke and you ask “What kind?” give them a sprite.

However, if I start brewing up my own brand of cola, and I label it “Coke” and start selling it, and Coca-Cola ignores me, and then 20 years later decides, wait, we own the name “Coke”, and tries to sue me, they’ll probably be out of luck. Because I’ve been using the name “Coke” to sell cola for 20 years without challenge, Coke has lost the trademark to the word “Coke”

Trademark’s get lost all the time, it’s just that no one notices because the companies that lost the trademarks are no longer in business. Coke isn’t going to lose the trademark to the name Coke because they aren’t going to ignore the guy brewing his own cola and selling it under the name “Coke”. But if they did, they would.

This isn’t necessarily true. If the Coca Cola Company has been filing its statutorily required declarations of use and incontestability during that twenty year period, its trademark is still afforded the presumed validity it acquired the day it was first issued. Declarations of incontestability are conclusive evidence of the validity of the registered trademark, of the registrant’s ownership of the trademark, and of the registrant’s exclusive right to use the registered trademark in commerce.

What’s the logic behind verbal usage diluting trademark anyway, even if not in the legal sense? When I say I’m going to go google something, I mean I’m going to use the Google search engine. How is that diluting the trademark?

It’s not like photoshopping something, where someone might actually be using Gimp instead.

I’m not sure that is in the sense of ordinary people calling tissues Kleenex. But if people are in the habit of ordering Coke and receiving Pepsi, without Coca Cola attempting to to rein that in, then someone could claim they’re not defending their trademark. I doubt that would fly in court, but both Coca Cola and Pepsi don’t like the practice for marketing reasons anyway. Although I do think Coca Cola and Kimberly Clark secretly enjoy having their products names used as the generic form. It’s kind of a win in the marketing game.