And what is trademark dilution?
Wouldn’t you think that the companies would enjoy the consumer’s mindset that a Johnson & Johnson brand Band-Aid is synonomous with a disposable wound cover? I mean, when I go into the store, there are Band-Aids and there are everything else…
No, they don’t like it at all. If every brand of tissue that a consumer sees on the store shelf is a “kleenex”, than there is nothing special in the consumer’s mind about the Kleenex brand. To retain its share of the market, Kimberly-Clark must gently but firmly remind people that Kleenex is a particular brand of tissue, not a generic term for all tissues.
Some other tradmarks people often overlook:
Styrofoam (polystyrene foam, or just foam)
Rollerblade (in-line skate)
Seeing-Eye dog (guide dog for the blind)
Ping Pong (table tennis)
Vaseline (petroleum jelly)
Kitty Litter (cat litter)
Scotch tape (sticky tape)
Post-It (sticky note)
TelePrompTer
Realtor (real estate agent)
Spackle (gypsum paste)
Double-edged sword. Sure, they probably love the idea. But they still have to defend the trade mark, or they lose it, and everyone else can start using it. They’d have to come up with a new trademark to distinguish their product, and that’s hard to do. Trademarks are valuable in and of themselves. Companies revive them or buy and revive them quite often. Kind of like remaking the “Brady Bunch” and “The Beverly Hillbillies.” Instant recognition. Would a GT40 be a GT40 if it were just a GT? Almost, but not quite (but that’s how it is).
My company apparently sucks… we make Popsicles, Vaseline, and Q-tips. :smack:
Since no one else has mentioned this, I’ll just point out that the distinction between [sup]TM[/sup] and ® is that you use the former while registration of the mark is pending with the U.S. Patent and Trademark Office, and can only use the latter after it’s been officially registered.
Trademark dilution operates under the theory that there are certain marks that are so well-known (“famous marks”) that no one else should be allowed to use them, even if the use in question does not result in confusion amongst consumers with regard to the origin of goods or services.
For example, if I open a hot dog stand in El Paso, and paste a big sign on it that says “Sotheby’s Finest Sausages, Sodas, Sandwiches, Stews, and Snacks,” it might be the case that Sotheby’s auction house would find it difficult to prove a likelihood of confusion, which would be necessary in order to get relief for a claim of trademark infringement under the Lanham Trademark Act of 1946, 15 U.S.C. Sec. 1114.
However, under the Federal Trademark Dilution Act of 1995, 15 U.S.C. Sec. 1125(c), if Sotheby’s can show that its mark is a famous (or “distinctive”) mark, then it can stop me from using the name for my hot dog stand if it can show that my use “causes dilution of the distinctive quality of the famous mark.”
Okay, so what does cause dilution? Well, strangely enough, that isn’t specified in the dilution act. If we look to the common law of trademark dilution, we see that there are two kinds of dilution, dilution by blurring and dilution by tarnishment.
“Dilution by blurring” has been defined as a use that results in an “association arising from the similarity between a designation of source and a famous mark that impairs the distinctiveness of the famous mark.” Sotheby’s can argue that if hot dog stands and copy shops and video rental stores and all other sundry businesses start using “Sotheby’s” in their names, then the mark loses some quality that it holds because right now it is uniquely associated with a famous New York auction house.
“Dilution by tarnishment” has been defined as a use that results in an “association arising from the similarity between a designation of source and a famous mark that harms the reputation of the famous mark.” Sotheby’s could try to use this argument if I set up an adult entertainment establishment called “Sotheby’s House of High Class Fun.”
Note that in neither case is Sotheby’s arguing that my use of the Sotheby’s mark is making consumers think that it is actually Sotheby’s Auction House that is providing the services in question, so they aren’t making a trademark infringement claim (although, in real life, they would probably try to do that as well).
Right now it isn’t clear that the diliution act allows for an action for diilution by tarnishment. There is currently a bill before Congress that would clarify the issue.
Since this thread is raging along nicely, I’d like to ask a further question:
What are the laws/restrictions regarding making a product name that is clearly meant to be a play on the real trademark (perhaps as little as changing one letter)?
Let’s say I want to market my new soda under the name Joca-Cola.
Or perhaps I want to market my tissues as Clean-ex?
I swear I’ve seen these one-offs IRL, but I just can’t think of any examples.
How about a really severe example like Frysbee?
In the cases you’ve suggested, you would be hit with an infringment suit so fast your head would spin. The only hope anyone trying a stunt like that has is to remain so far under the radar of the trademark holder that they don’t find out about it before they’ve made a little money. But that’s next to impossible these days.
OK well I kinda figured that. So I guess my question is, where is the line drawn.
In the Coca-Cola example, is it anything that rhymes? Joca-Cola? Loca-Cola (for the mentally unstable), Smokah-Cola (nicotine flavored), or Mocha-Cola (coming soon to a Starbucks near you)?
When I trademark something, am I automatically reserving the my product name and anything that rhymes with it?
The trademark holder has to demonstrate the possibility of confusion. With something like Mocha-Cola, it’s doubtful they could pull that off.
The bottom line, though, is that companies like Coca-Cola have (a) attorneys that are experienced at defending trademarks and (b) big legal budgets. I wouldn’t mess with them.
This last point is the most important. The people trying to play off a famous mark invariably are smaller and poorer than the companies that own the famous mark, and the big guys are usually ruthless in using their power and wealth to clobber the little guys.
Google on Bully Hill and Coca-Cola for a particularly egregious tale of a man who was forced (without a trial) to stop using his own name and to destroy “all Paintings, Art Work, Poetry, and Promotional Materials, that told others about Walter S. Taylor and his Heritage.”
McDonald’s has sued people in Scotland named McDonald, and gone after lots of small companies that tried to call some product or service “McSomething.” I think they failed in the Scottish case, but they have generally prevailed, not because they have the law on their side, but because they have unlimited resources to persecute anyone they want to go after.
I have personal experience in this area. My company was threatened with a dilution lawsuit that I probably would have won, but it would have cost me several hundred thousand dollars to go to trial. So I took a large sum of money from the big company to change my company’s trading name. It worked out okay for me, but it was galling to have to give up a just position only because the other side had lots more money than I did.
Can you tell us anymore? What was your company name and who did you threaten?
No. There are no automatic reservations of any kind. The trademark holder has to persuade a court that, given all the circumstances (good/bad faith actions, geographic, marketing, etc., there is a likelihood of confusion regarding a particular name.