Does your trademark litigation involve genericness? Consider hiring Keegan & Donato Consulting for their expertise in the use of genericness surveys that can yield highly reliable data to support your case strategy.
Keegan & Donato Consulting’s capabilities include state-of-the art survey designs that are probative of the issues in each case, able to target specific consumer populations with appropriate universe selection and sampling frames, and feature cutting-edge rotation and randomization of hundreds of question types with customizable complex skip and display logic.
Although we specialize in designing and executing consumer surveys that will stand up to judicial scrutiny, we are often engaged to critique consumer research studies submitted by opposing experts. We have reviewed and rebutted many consumer surveys conducted in conjunction with litigation.
What is Genericness?
The principal function of trademarks is to identify the source (provider) of a product or service and protect consumers from confusion and deception.
Generic marks are usually common dictionary words and are the weakest types of marks. They cannot be protected as trademarks because they are not distinctive and fail to distinguish a product or service from those of others or identify the source of the product or service.
Under the Lanham Act, a mark that was once protected can be subject to cancellation if it “becomes the generic name for the goods or services, or a portion thereof, for which it is registered”.
This has occurred many times to former trademarks, such as aspirin, taser, yoyo, dumpster, jacuzzi, and popsicle, which eventually became the household names for those products. Here are several brand names that have been declared generic due to their name’s widespread popularity.
Escalator – Otis introduced this moving stairway in 1900 but lost its legal protection in a landmark 1950 trademark case when the U.S. Patent Office officially genericized the term because the company itself had used escalator as a generic descriptive term in its own patents and advertising.
Thermos – Thermos, LLC, introduced a “vacuum flask” in 1904 but lost its trademark protection in 1963 when “thermos” was declared a generalized trademark.
Zipper – This product was first registered as a trademark in 1925 by B.F. Goodrich for overshoes with zippered fasteners. The company sued to protect the trademark in 1930 but only got to keep the rights to Zipper Boots, since “zipper” had already become a generic term.
Defend Against a Petition to Cancel
Competitors will often attempt to convince a court that a legally protected trademark should be designated as generic and made available for everyone to freely use. Such was the case in Elliott v. Google, Inc., 45 F. Supp. 3d 1156 – Dist. Court, D. Arizona (2014).
The plaintiff, who had registered over 750 websites with names like “GoogleDisney.com” and “GoogleBarackObama.com argued that the Google trademark had become genericized because the public had come to understand the word to mean conducting an Internet search.
Consumer survey evidence played a significant part in the case and demonstrates the need for hiring a qualified survey expert. The Court completely disregarded the plaintiff’s surveys as unscientific and poorly constructed, and rejected the survey expert as unqualified “to design a survey or to interpret survey results.” The Court eventually ruled that “Google” can remain a valid and protectable trademark.
Whether you are interested in the use of genericness surveys to support your case strategy in trademark litigation, Keegan & Donato Consulting has the qualifications and expertise to quickly deliver intelligence within a wide range of budgets. Get in touch with us today at (914) 967-9421 to find out how we can help.