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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.).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.
Answer key for Heidi Cody alphabet of trademarks included in my rather quirky first day slides posted on the casebook website:
Sometimes for the first day of class I include an alphabet of trademarks developed by the Brooklyn artist Heidi Cody some years ago and precede this alphabet with a quick quiz of tree leaves. It’s interesting and probably predictable that my students can’t typically identify more than one or two leaves associated with trees but can instantly identify 20 or more of the brand names based only on one letter from the brand. It’s an easy demonstration of the power of trademarks.
Answers to Media Literacy Alphabet Exercise
A: ALL
B: BUBBLICIOUS
C: CAMPBELLS
D: DAWN
E: EGGO
F: FRITOS
G: GATORADE
H: HEBREW NATIONAL
I: ICE
J: JELLO (SUGAR FREE)
K: KOOLAID
L: LYSOL
M: M N M’S
N: NILLA WAFERS
O: OREO
P: PEZ
Q: Q-TIPS
R: REESE’S
S: STARBURST
T: TIDE
U: UNCLE BEN’S
V: V8
W: WISK
X: XTRA LAUNDRY DETERGENT
Y: YORK PEPPERMINT PATTIES
Z: ZEST–based on an artwork by Heidi Cody
Deborah, I just took a look at the video. It’s actually really well done, and just goofy enough to be good (I love how the guy skips up onto the stage to start things off). I’ll admit that I probably won’t assign it because it’s so lengthy but I will steal from it.
Mike, that’s perfect for Pitt. I try the local effect by choosing a recent SDNY case and assigning the pleadings (we read other documents from the docket as the semester proceeds, including the trial transcript). Last year we did a fashion case involving a store down the street that sued Kate Spade. This year it’s a dispute between Kind and Clif Bar over the suspiciously similar trade dress of their snack bars. Debevoise’s lawyers will come in later in the semester to talk with the class about the case.
Hmm, fair point. I still think that, for example, if the PTO struck Redskins from the register, no federal court would protect the wordmark under 43(a), perhaps via its general power under Section 37, and in the tradition of public morals. But on reflection, I think you’re right that the casebook states this too definitely. The government imprimatur thing is a fair objection, but I wonder if 43(a) would be perceived to operate similarly. I will convert this issue in the book into more of an open question.
