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#363
Barton BeebeBarton Beebe
Keymaster

This is actually a comment from Mike Madison, which I’m posting for him (a bit annoyingly, to reply to a comment, you’ve got to log on and reply within the forum rather than by email):

I mostly agree with Deborah, and I’ll add a couple of additional thoughts. First, the Abercrombie spectrum (which gives us generic, descriptive, suggestive, and arbitrary and fanciful marks) is an overlay on the common law and statutory framework, which focuses entirely (and solely) on the presence or absence of distinctiveness. So, when I teach protectability of marks, I hammer at “distinctiveness” a lot, and I hammer at related sub-themes, like the spectrum, and distinctiveness for design marks and trade dress, somewhat less. Second, at least in theory words and phrases (and other signs) can move both up and down the spectrum based on usage and practice, notwithstanding the usually accepted dictum that genericide consigns a mark to “non-distinctive” status for all time. (Nb. the possibility that even a generic mark might in some cases be the basis for relief under Section 43).

A question: Can anyone think of a mark that has been rescued from generic status? Or, at least, where efforts to do so have been at least partly successful? Google comes to mind; for a while, the company was pretty copacetic about consumer use of the mark “Google” both as a noun to refer to search engines generally, and as a verb. But the company changed its tune. I no longer here “to Google” something as frequently as a I used to, in the context of search in general.