Reply To: generic marks

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#364
Barton BeebeBarton Beebe
Keymaster

Mike asked about any marks that been rescued from generic status. McCarthy records that Singer and Goodyear were both distinctive, then went generic, and then were rescued. I find McCarthy’s discussion of the Goodyear mark (§ 12:32) not totally clear, but his discussion of the Singer mark (§ 12:32) is sort of interesting. Here it is below:

In 1896 the United States Supreme Court held that the word SINGER had become a generic designation of a certain class of sewing machines.1 However, the company continued to extensively advertise the SINGER mark and also used variations such as “S” and “Singer Sewing Center.” By 1953, one court said that the mark SINGER had been “recaptured” from the public domain by continuous and exclusive use and advertising on a wide variety of products.2 Both before and after the 1953 decision, courts protected the SINGER name as a strong trademark.3 Thus, the SINGER saga shows that it is possible for a company to reclaim a generic name back from the public domain, and by extensive advertising, give it trademark significance. However, it must be recognized that SINGER has gone back to being a valid trademark only by “educating” buyers into not using the term as the name of a class of sewing machines, but as a symbol indicating products coming only from one source.

The Singer situation was discussed in a case where the district court found a probability that “Lite” for beer, held generic on evidence of 1976 usage, had by 1980 been reclaimed as a mark, but the court of appeals reversed, saying that there must be proof that the word has ceased to have any generic meaning. The court explained the SINGER recapture as a situation where by 1953 SINGER “had in contemporary usage no generic meaning.”4

1
Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 41 L. Ed. 118, 16 S. Ct. 1002 (1896). But compare the sweeping statement of the Supreme Court that once a mark becomes generic, no subsequent change of law can make it back into a mark: “The right to individual appropriation once lost is gone forever.” Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 36, 45 L. Ed. 60, 21 S. Ct. 7 (1900).
2
Singer Mfg. Co. v. Briley, 207 F.2d 519, 99 U.S.P.Q. 303 (5th Cir. 1953).
3
See, e.g., Singer Mfg. Co. v. Axelrud, 28 F. Supp. 450, 42 U.S.P.Q. 622 (D.N.Y. 1939); Singer Mfg. Co. v. American Appliance Co., 86 F. Supp. 737, 83 U.S.P.Q. 112 (D. Ohio 1949); Singer Mfg. Co. v. Redlich, 109 F. Supp. 623, 96 U.S.P.Q. 85 (D. Cal. 1952); Singer Mfg. Co. v. Singer Upholstering & Sewing Co., 130 F. Supp. 205, 104 U.S.P.Q. 339 (D. Pa. 1955); Singer Mfg. Co. v. Sun Vacuum Stores, Inc., 192 F. Supp. 738, 129 U.S.P.Q. 100 (D.N.J. 1961); Singer Co. v. Unishops, Inc., 421 F.2d 1371, 164 U.S.P.Q. 631 (C.C.P.A. 1970).
4
Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5, 211 U.S.P.Q. 665 (1st Cir. 1981), rev’g 503 F. Supp. 896, 209 U.S.P.Q. 137 (D.C.R.I.).