Genericide: Cancellation of a Registered Trademark

Fordham Law Review, Sep 2017

By Jacqueline Stern, Published on 01/01/83

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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)


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Jacqueline Stern. Genericide: Cancellation of a Registered Trademark, Fordham Law Review, 2018, pp. 666, Volume 51, Issue 4,