Genericide: Cancellation of a Registered Trademark
Genericide: Cancellation of a Registered Trademark
0 This Article is brought to you for free and open access by FLASH: The Fordham Law Archive of Scholarship and History. It has been accepted for inclusion in Fordham Law Review by an authorized editor of FLASH: The Fordham Law Archive of Scholarship and History. For more information , please contact
Jacqueline Stern Recommended Citation Jacqueline Stern, Genericide: Cancellation of a Registered Trademark, 51 Fordham L. Rev. 666 (1983). Available at: https://ir.lawnet.fordham.edu/flr/vol51/iss4/4
-
Article 4
Follow this and additional works at: https://ir.lawnet.fordham.edu/flr
Part of the Law Commons
GENERICIDE: CANCELLATION OF A REGISTERED
TRADEMARK
INTRODUCTION
The purpose of a trademark is to indicate to the public that goods
come from a particular source.' The use of trademarks is regulated by
the Lanham Act (Act). 2 Congress created the Act in order to protect a
trademark owner in his use of a particular mark and to prevent public
confusion concerning the source of goods. 3 Registration of a mark
1. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 412-13 (1916). A
trademark is defined by federal statute as "any word, name, symbol, or device or any
combination thereof adopted and used by a manufacturer or merchant to identify his
goods and distinguish them from those manufactured or sold by others." 15 U.S.C. §
1127 (1976). Judge Learned Hand wrote that a manufacturer's trademark "is his
authentic seal; by it he vouches for the goods which bear it; it carries his name for
good or ill .... [A] reputation, like a face, is the symbol of its possessor and creator,
and another can use it only as a mask." Yale Elecs. Corp. v. Robertson, 26 F.2d 972,
974 (2d Cir. 1928). As one court stated, "[a] trade-mark is a trade-mark because it is
indicative of the origin of the goods." G.&C. Merriam Co. v. Saalfield, 198 F. 369,
372 (6th Cir. 1912), affd in part, 238 F. 1 (6th Cir.), cert. denied, 243 U.S. 651
(1917).
Trademarks have been used for hundreds of years. They were developed in order
to trace responsibility for shoddy workmanship. Rogers, The Lanham Act and the
Social Function of Trade-marks, 14 Law and Contemp. Probs. 173, 173-74 (1949).
For a comprehensive discussion of trademark law, see generally L. Amdur,
TradeMark Law and Practice (Lanham Act ed. 1948); 3 R. Callmann, the Law of Unfair
Competition, Trademarks and Monopolies (3d ed. 1969 & Supp. 1982); 1 J.
McCarthy, Trademarks and Unfair Competition (1973); E. Vandenburgh, Trademark
Law and Procedure (2d ed. 1968).
2. Pub. L. No. 79-489, 60 Stat. 427 (1946) (current version at 15 U.S.C. §§
1051-1127 (1976)). Federal registration of a trademark serves as notice to the public
of an ownership claim. Id. § 1072. The trademark owner is granted exclusive use of
his mark, id. § 1057(b), so that all others are prohibited from affixing that mark to
similar goods. Id. § 1114(1). Four categories of marks have been recognized for
determining whether registration of a term is appropriate: 1) arbitrary (a common
term, used in an unfamiliar manner); 2) fanciful (a newly created or coined term),
or suggestive (a term requiring imagination to link it to the trademarked goods); 3)
descriptive (a mark that describes a quality or characteristic of the trademarked
product and will be registered only if the term has acquired a secondary meaning, so
that the public associates the term with the producer); and 4) generic (a term that is
the common name for a type of goods, is part of the general vernacular and which
will not be registered as a trademark). See, e.g., Surgicenters of Am., Inc. v. Medical
Dental Surgeries, Co., 601 F.2d 1011, 1014-15 (9th Cir. 1979); McGregor-Doniger
Inc. v. Drizzle Inc., 599 F.2d 1126, 1131-32 (2d Cir. 1979); Educational Dev. Corp.
v. Economy Co., 562 F.2d 26, 28 (10th Cir. 1977); Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976); Nabisco Brands, Inc. v.
Quaker Oats Co., 547 F. Supp. 692, 697-98
(D.N.J. 1982)
; Discount Muffler Shop,
Inc. v. Meineke Realty Corp., 535 F. Supp. 439, 444-
45 (N.D. Ohio 1982
); Nature's
Bounty, Inc. v. Superx Drugs Corp., 490 F. Supp. 50, 53
(E.D.N.Y. 1980)
.
3. S.Rep. No. 1333, 79th Cong., 2d Sess. 3, reprintedin 1946 U.S. Code Cong.
Serv. 1274, 1274.
creates a presumption that it is valid; 4 however, the Act provides that
a registered mark may be cancelled if it has become the "common
descriptive name" for a product.5 In other words, a mark may be
cancelled if it has lost its trademark significance and become generic. 6
A generic term, such as the word "car," designates a type or class of
goods, rather than indicating that the product comes from a single
7
source.
The traditional standard for determining genericness is based on
how the public perceives the contested mark 8-whether consumers
understand the mark to mean only a type of product, or whether they
recognize the name as being source indicative.9 A new standar (...truncated)