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Public & Media Impact on Trademark Rights

The public and media's indiscriminate usage of protected trademarks can make the marks become generic and thus unprotected as trademarks. Trademarks are defined as any word, name, symbol, or device, or any combination thereof used to identify and distinguish one's goods from those manufactured or sold by others and to indicate the source of the goods. The essential functions of trademarks are: (1) to identify and distinguish goods from those sold by others, (2) to signify that goods bearing the same trademark originate from the same source, (3) to show consumers that all goods bearing the same trademark are of the same quality level, and (4) essentially, to represent the good will and reputation of a company.

A generic term is one that comes to describe a class of goods rather than an individual product.

A term is generic, and thus not entitled to protection from infringement, when it refers to genus or class of product, rather than particular product or when majority of buying public associates term with product, rather than source of product, whether source is known or unknown.

Genericide of a trademark is the deterioration of a once valid, protectible trademark into a common term available for use by anyone. Use of a mark to describe the product or service with which it is associated, and not as an indicator of a source for that type of product or service, may cause the mark to become generic and effect a loss of trademark rights. The rationale behind not offering trademark protection for generic terms for a good or service is that granting trademark protection for a generic term would grant the mark owner a virtual monopoly because his competitors would not be able to accurately describe their goods or services. Reasons for genericide: no suitable generic term for the trademarked item, generic term exists but is too cumbersome or difficult for the general public to pronounce, one brand of a product dominates others in the market, or becomes famous for being the first to introduce a product. Although a generic term cannot be trademarked, it is possible for a word to be generic of some things and not others; in such a case, the word may receive trademark protection for its non-generic use. ("ivory" is generic of elephant tusks but arbitrary as applied to soap).

Courts have consistently held that in determining whether a mark has become generic, the only relevant opinion was that of the general public, not that of trade professionals and experts. The appropriate test to determine whether a mark is generic is whether the public perceives term primarily as designation of article. Evidence used to prove genericness can include the following: dictionary definitions are relevant and sometimes persuasive in determining public usage because the assumption is that dictionary definitions "usually reflect the public's perception of a word's meaning and its contemporary usage" and generic usage in the media such as in trade journals and newspapers.

An appropriate trademark notice (®, ™, SM) must be placed adjacent to the first and most prominent reference to the trademark: never use a trademark in the possessive, never use a trademark in the plural, never use a trademark as a verb, never include a trademarked term in a hyphenated phrase, capitalize trademarks as they appear in the trademark database. Be especially aware of unusual capitalization, and do not abbreviate a trademarked term unless the abbreviation is also a trademarked term.

Once a name is adjudged to be generic, a seller generally cannot take it and use it as a trademark merely by use and advertising. There is, however, the very rare case where with a "massive" amount of advertising, "it does appear possible for a company to reclaim a generic term from the public domain and give it trademark significance."



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