Legal Genericide

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Legal Strategies for Protecting Brands from Genericide:Recent Trends in Evidence Weighted in Court Cases

Charles R. Taylor and Michael G. Walsh

i/nder the Lanham Act and the Trademark Revision Act of 1988, trademarks may b ecancelled if it is ruled that consumers use the brand nam e to describe a generic ca tegory.Trademark cancellation, or "genericide," has high stakes in that it can result in the loss ofa valuable corporate asset. The authors provide an overview of the history of trademarkcancellation cases and examine what types of evidence are considered in such cases. Theauthors provide an analysis of trends in recent court rulings and advice for avoidinggenericide.

Businesses, scholars, and policymakers alike have longrecognized the value of trademarks. Legally pro-tected brand names serve several important func-

tions, including identifying the product as distinct fromcompetitors, signaling quality or other key brand attributes,and serving as promotional tools (Dorr and Munch 1990;Jacoby and Morrin 1998; Simonson 1994). More than14,000 lawsuits related to trademark protection were filed inthe 1990s in the United States alone (Howard, Kerin, andGengler 2000). In addition, more effort has been placed onassigning values to leading brands. For example, a surveyconducted byBusinessWeek in conjunction with InterbrandConsulting concluded that 100 global brands have values ofat least $1 billion; Coca-Cola leads the way at $68.9 billion(BusinessWeek 200\).

Because of the substantial value that can be derived from

brand names and trademarks, considerable research on pro-tecting trademarks has evolved in recent years (e.g., Bur-gunder 1997; Howard, Kerin, and Gengler 2000; Kopp andSuter 2000; Morrin and Jacoby 20 00; Simonson 1994). Theresearch has focused on several areas, including trademarkdilution based on unauthorized use of a mark (Jacoby andMo rrin 1998; Simonson 1994), trademark infringement(Burgunder 1997; Howard, Kerin, and Gengler 2000), andthe application of trademark laws to the Internet (Kopp andSuter 2000).

An area that has been given somewhat limited attention inthe marketing literature is "genericide," w hich occurs whenthe courts rule that a brand name has become generic andthereby cancel the right to the name under provisions anddefinitions provided for in the Lanham Act of 1946 (60 Stat.427) and the Trademark Revision Act of 1988 (Pub L. No.100-667, 102 Stat. 3935; Oakenfull and Gelb 1996). Twonotable studies that have focused on genericide are Simon-son's (1994) and Oakenfull and Gelb's (1996). However,both of these studies point out that there is often a fine linebetween a brand's being ruled generic or not by the courts,

CHARLES R. TAYLORis Professor of Marketing, andMICHAEL G.WALSH is Associate Professor of Business Law, Villanova Univer-sity. The authors thank Kevin Koo for the helpful comments on thearticle.

and they make it clear that practitioners need to pay cheed to factors considered in court rulings.

The purpose of this article is to provide an overviewprior recommendations for keeping an at-risk brand fbeing ruled generic and then to review recent court rulto assess which specific strategies appear to be most etive. The remainder of the article begins with an overviewhy the issue of genericide warrants attention. We disthe importance of brand equity and the possible loss of equity due to genericide. This is followed by a reviewprevious research relevant to generic trademark issues areview of recommendations for practitioners who are atof losing their trademark to genericide. Next, we provihistorical examination of key court cases, including rerulings. Finally, we summarize trends in generic trademrulings and assess which strategies are most valuabl

practitioners.

An Overview of Genericide and ItsImportanceThe regulation of brand nam es that become common ly to refer to a product category is a legally complex issue.toric examples of brand names that have had their trmarks cancelled include aspirin, cellophane, cola, yotrampoline, brassiere, elevator, escalator, nylon, linoland bentonite (McCarthy 1998; Simonson 1994). In reyears, brand names such as Monopoly and Thermos hbeen ruled generic and have lost their trademark protecMean while, several brands that appear to be used com mto refer to a general product categoryincluding JRollerblade, Lego, Tarniac, X erox, Sheetrock, Scotch, Litter, and Tefionhave survived. Because of the comcated nature of the laws and regulations governing trmarks, it is necessary to examine how com panies have to defend themselves against genericide and what defecurrently are most effective with the courts.

The stakes undoubtedly are very high when a branthreatened with genericide. As Oakenfull and Gelb (1note, lawsuits aimed at having a brand name declgeneric are instituted when the brand has become domiIn these cases, brand equity is normally high.

160 Journal of Public Policy & MarketingVol. 21 (1

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Journal of Public Policy & Marketing 161

Brand equity refers to the value a brand name adds to aproduct above and beyond the brand's physical attributes(Kam akura and Russell 1993; Park and Srinivisan 1994;Yoo, Donthu, and Lee 2000). Brand equity has been studiedfrom both a financial perspective and a strategic manage-ment perspective (Keller 1993). Aaker(1991, 1996) notesthat brand equity is important to companies even beyond thefmancial value associated with the asset, because it can be akey force contributing to a sustainable competitive advan-tage. Thus, in addition to the fmancial value associated witha strong brand, a company can benefit from associationsconsumers have with a brand (Keller 1993). As Yoo, Don-thu, and Lee (2000) observe, these associations may makeconsumers less likely to consider competing brands, morelikely to pay a higher price for the strong brand, and moreprone to be persuaded by well-designed marketing commu-nications (Barwise 1993; Simon and Sullivan 1993; Smithand Park 1993). Therefore, the potential loss of a brand thatis declared generic can be viewed as both a loss of a fman-cial asset and a source of long-term competitive advantage.

Conventional Wisdom on AvoidingGenericideTwo general strategies for avoiding and/or fending offcharges of genericide have long been emphasized by trade-mark experts (Cohen 1986,1991; Oakenfull and Gelb 1996;Simonson 1994; Wilson 1998). The first general strategy isto distance the brand name from the generic product cate-gory through advertising and public relations efforts. Thesecond is to make appropriate use of survey research indefending a brand against charges that it has become ageneric name.

According to McCarthy (1998), four pieces of evidenceare particularly relevant to court decisions. These include(cf. Oakenfull and Gelb 1996)

1. The absence or presence of the term in dictionaries and itsdefinition in relationship to the goods,

2. The manner of use by the trademark owneras a trademarkor as a common name for the goods,

3. The manner of use by competitors and the trade, and4. Consumer surveys.

The second and third items from this list are related closelyto advertising and public relations strategies, and the firstand fourth are closely linked to survey research pertaining tothe usage of the name.

Advertising and Public Relations StrategiesTwo major types of advice have been given for avoidingtrademark cancellation based on the brand being ruled ageneric name. The first is to use category advertising, espe-cially early in a product's life cycle (Oakenfull and Gelb1996). The idea is to publicize a category name that is dis-tinct from the brand name before the brand name becomessynonymous with the category name. Oakenfull and Gelbsuggest that the cost of promoting the category to the mar-keter of a first dominant brand will be offset by long-termgains that can be built by establishing a sustainable compet-itive adva ntage.

A second aspect of avoiding genericide through advertising and public relations is that the company owning thebrand name should take steps to ensure proper usage of thetrademark. Wilson (1998) provides a summary of measuresthat can be taken to reduce the likelihood of genericideThese include the following:

1. The trademark should be used as an adjective and never as noun. For example, "Campbell's soups" or 'Totes umbrellasshould be used in advertising and promotion, not "Camp-bell's"or 'To tes" alone.

2. The trademark should be used as a proper adjective. Thuspromotion should refer to Rollerblade inline skates andshould not include lines such as "I want some Rollerblades."

3. The trademark should always be used in the singular. Adver-tising and public relations materials should never use a pluraversion ofthe trademark. For example, "Easy Spirit shoes" or"Crayola crayons" should be used, but not "easy spirits" o"crayolas."

4. Possessives should be avoided in promotion. For example'The great taste of Heinz 57 steak sauce" is appropriate, bunot "Heinz 57's great taste."

5. The company should develop guidelines that suggest howothers shoulduse the trademark. They should be publicized tothe media as well as any companies that license the product.

Words that are merely descriptive can sometimes be reg-istered when no conflicting rights are asserted by competi-tors (De Walt Inc. v. Magna Power Toot Corp.1961). Butcourts have ruled that no amount of advertising or other pro-motions can convert a generic term into one that can be reg-istered as a trademark. When there is only one source for aparticular kind of merchandise over a period of time, thepublic may come to associate that source with the name bywhich the merchandise is called. This cannot, however, takethe common descriptive name of the product out of publicdomain and temporarily give the exclusive user of it exclu-sive rights to it, no matter how much money or effort theuser pours into promoting the sale of the product(J. Kohn-stam Ltd. v. Louis Marx & Co.I960).

Survey Evidence on Usage of the Brand NameBecause the meaning of terms can vary across people andsituations, determining whether a brand name should beruled generic can be difficult (Simonson 1994). As Cohen(1991) notes, the Trademark Law Revision Act of 1988states that the primary significance of the brand name toconsumers, not their motivation for using the term, deter-mines whether the brand name is generic, tn the past, therehave been opposing views on how to measure "primary sig-nificance," which courts generally regard as the foremostprinciple for determining genericness(Kellogg Co. v.National Biscuit Co. 1938). As is discussed in more detailsubsequently, courts' application of the primary signifi-cance test furnishes clear guidelines for marketers whengeneric ide is at issue. Ca ses have com e out differently as aresult of the courts' acceptance of different measures ofprincipal significance. Moreover, as demonstrated by anexperiment conducted by Simonson (1994), different meth-ods for assessing genericness are likely to produce differentresults.


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162 Policy Watch (Edited by Ronald Paul Hill)

According to Simonson (1994, p. 185), in assessing theprimary significance of a term, the courts consider factorssuch as

1. The share of buyers who use the term as a trademark or as ageneric term;

2. The share of buyers who use the term as both a generic termand a trademark and whether one of these two meanings ismore prominent;

3. The availability and knowledge of alternative generic names;and

4. Other relevant factors, such as whether the trademark ownerhas taken reasonable action to prevent the trademark frombecoming generic.

Companies on both sides of a dispute over whether abrand is generic can use survey research to provide evidenceon the first three factors. Complicating the issue even furtheris that courts have often made a distinction between "under-standing" and "usage" based on the logic that a consumermay understand that a brand name is not generic but mayuse the term to refer to the generic category anyway(Simonson 1994; Swaan and Palladino 1988).

As a result of ambiguity created by differences in under-standing and usage, when a firm's brand name is alleged tobe generic, parties have used two survey techniques to sup-port their positions: (1) the purchase encounter techniqueand (2) the classification technique.

The purchase encounter technique describes a product forconsumers and then asks them what they would ask for ifthey were going to the store to purchase it. This usage mea-sure would be implemented by describing a product andthen asking the consumers what they would ask for in a pur-chase situation. As Simonson (1994) notes, an examplewould be describing "a type of container that is used to keepliquids hot and cold," and then asking "If you were shoppingfor the product, what would you ask for?" If respondentsanswer with the trademark, the interviewer follows up byasking for an alternative description of the product cate-gories.

Under the purchase encounter technique, if a large pro-portion of consumers answer with the brand name in ques-tion, this supports the position that the brand name is generic(Simonson 1994). In general, the purchase encounter tech-nique will produce results less favorable to the brand namethan will the classification technique.

Under the classification technique, consumers are pro-vided with definitions of a generic term and brand namesand then are asked to classify various terms, including thedisputed brand name. Simonson (1994) suggests that thistechnique produces demand artifacts, as consumers maytend to work hard to identify names that are actually brandnames. In general, this technique is likely to produce resultsmore favorable to the contested brand name. Simonson alsonotes that different estimates of generic usage and under-standing are highly sensitive to the method employed.Therefore, it is necessary to understand what weight thecourts give to various techniques in deciding such cases.Court decisions establishing guidelines for the use of surveyevidence are discussed subsequently.

Summary of Conventional WisdomThe goal of this article is to determine which aspects ofconventional wisdom pertaining to keeping a brand nfrom being ruled generic are employed by the courts. Wregard to advertising and public relations strategies,issue of whether following guidelines pertaining to usage of the brand name along with publicizing these gu

lines to the media is weighed heavily by the courts. W hethe impact of primary demand advertising early in thecycle has been an issue in these cases is also assessed.

With regard to survey evidence, we examine the wecourts give to survey evidence. In addition, we consideissue of whether there are any specific methodologies are looked on favorably or disregarded by the courts.

MethodWe conducted a Lexis-Nexis search to identify cases involved an assessment of whether a brand name become generic. We examined all cases subsequent toLanham Act. For the purposes of this article, we dis

only key cases heard between 1946 and 1975; to examtrends in genericide cases, we stress those litigated s1975 and especially those since the passage of the Trmark Revision Act in 1988.

Legal Guidelines for DeterminingGenericnessUnder the Lanham Act, an applicant cannot registegeneric name as a trademark, because the applicant's pucts or services may be impossible to distinguish from tof others (15 U.S.C. IO52[t];San Francisco Arts & Athletics Inc. V. United States Olym pic Com mittee1987)Indeed, trademark law treats the terms "gene ric" and "trmark" as mutually exclusive. The purpose of a trademato identify the source of the product it marks, theanswering the question, "Who are you?" A generic termcontrast, names the product itself and thus answers the qtion, "What are you ?" (McCarthy 1998, pp. 12-14). Genterms must remain in the public domain, free for all toto prevent one user from wielding trademark rights unfto its competitive advantage(Door Systems Inc. v. Pro-LinDoor Systems Inc.1996).

The Primary Significance TestThe Supreme Court of the United States first enunciated"primary significance" test in 1938, in a case in w

Nabisco claimed that it was entitled to the exclusive uthe term "shredded wheat," even after its patent had expNabisco argued that its evidence established that the pidentified the term with Nabisco and therefore establisecondary meaning. Disagreeing, the Supreme Cexplained that, to establish a trade name in the term "shded wheat," a party "must show that the primary sigcance of the term in the minds of the consuming publnot the product but the producer"(Kellogg Co. v. NationaBiscuit Co. 1938, p. 118).

Years later. Congress codified this holding in the Trmark Clarification Act of 1984 (15 U.S.C. 1064 nwhen it required the "primary significance test" to be


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test for determining whether the registered mark" hasbecome generic. This act specifies that "A registered markshall not be deemed to be the common descriptive name ofgoods or services solely because such mark is also used as aname of or to identify a unique product or service" (15U.S.C. 1064, 1127).

The primary significance test generally is satisfied if aterm signifies a product from a single source, that is, a prod-uct brand. Conversely, it is not satisfied if the product thatemanates from a single source is not only a product brandbut a product genus(A.J. CanfteldCo . v. Honickman 1986).The Trademark Law Revision Act of 1988 further clarifiedthat it is the brand name's significance to consumers, notconsumers' motives for using the term, that must be used ingenericide cases.

Canceling a Registered TrademarkA registered trademark can be canceled if it later becomesthe generic name for some or all of the goods or services forwhich it registered (15 U.S.C. IO64[3]). When the relevantpublic ceases to identify a trademark with a particularsource ofa product or service but instead identifies the markwith a class of products or services regardless of source, thatmark has become generic and is lost as an enforceable trade-mark (Creative Gifts Inc. v. UFO2000).

Bringing About GenericideAlthough direct evidence of the perception of a trademarkby the general public normally is required to bring aboutgenericide, courts sometimes have found that indirect evi-dence alone is sufficient. Evidence of the public's under-standing of a term that has been challenged as generic maybe obtained from any competent source, including purchasertestimony; consumer surveys; and listings in dictionaries,

trade journals, newspapers, and other publications. Never-theless, direct consumer evidence, such as consumer sur-veys and testimony, generally is preferable and has becomealmost mandatory in litigation over genericness(BernerInternational Corp. v. Mars Sales Co.1993). Without sur-vey evidence, a court is left to rely on grammatical logic andother commonly available factual evidence, such as dictio-nary definitions and media usage(Convenient Food MartInc. V. 6-Twelve Conven ient M art Inc. 1988). As isexplained subsequently, alleged generic usage of the chal-lenged term by the registrant in its own advertising can beespecially damning(Thomas & Betts Corp. v. Panduit Corp.1998).

Direct EvidenceCourts generally prefer direct evidence to indirect evidencewhen a mark is challenged as generic.

Consumer Survey EvidenceAs explained previously, whether a mark is generic andtherefore cannot be registered hinges on the primarysignif-icance test. This test inquires whether the primary signifi-cance of a term in the minds of the consuming public is theproduct or the producer(A.J. Canfteld Co. v. Honickman1986). Typically, when the issue of whether a mark can beregistered is raised, each side offers evidence of the public's

understanding of the mark in question. The evidence often isobtained directly, through the use of surveys.

Courts deciding whether a mark has become genericregard consumer survey evidence as highly desirable. Onecourt went so far as to describe such evidence as "almost derigueur" these days(Convenient Food MartInc. v. 6-TwelveConvenient Mart Inc. 1988). Considering whether "sodacrackers" was a generic name, another court accepted indi-rect evidence to establish genericness but made it clear thatconsumer survey evidence would have been preferable(KeeblerCo. v. Rovira Biscuit Corp.1980).

Consumer survey evidence, as opposed to surveys ofother parties, is generally regarded as persuasive in litigationover genericness. For example, evidence that vendors, man-ufacturers, and operators of automatic automobile washingservices did not regard the term "touchless" as generic whenused in the names of such services was ruled unpersuasivein one case, because the purchasers of such services werethe relevant public w hose perceptions w ere to be considered(Magic Wand Inc. v. RDB Inc.1991).

The court will disregard a survey that is not properlydesigned. In one case, consultants employed by the manu-facturer of diet chocolate fudge soda, which was suing acompetitor for trademark infringement over its use of theterm "chocolate fudge soda," interviewed 341 people over16 years of age in the Chicago area. Of the respondents,59 % knew that the plaintiff made diet chocolate fudge sodaand did not know of any other company that made it. Yet thecourt took pains to point out that such a response did notnecessarily prove that chocolate fudge soda was protectable,because the respondents may have identified the genericname for a product with a single manufacturer if that manu-facturer had dominated the market. The court summarizedthe survey in this way:

The survey asked: "Have you ever heard of chocolate fudgeused in connection with a soft drink?" To those who answeredyes, the survey then asked: "Based on what you know about itdescribe to me what kind ofdrink it is."To those who answered"no," the survey asked: "Just going by the name, describe to mewhat kind of a drink that is." Forty-one percent of those whoknew of the drink and thirty-five percent of those who did notgave answers that the survey takers characterized as "tastes likechocolate" or "it's a chocolate soft drink."(A.J. Canfield Co. v.Honickman 1986, p. 302)

The court went on to explain:

No other category of answers received more than a fifteen per-cent response, but answers were as varied as "carbonated bever

age" (15% & 14%), "don't like it/unappealing" (13% & 13%)and "made by Canfield" (5% & 7%). The fact that 7% of thosewho stated they had never heard of a "chocolate fudge" softdrink also stated that the drink was made by Canfield indicatesthat, apart from any other flaws, the survey's basic mechanicsare subject to question.(A.J. Canfield Co. v. Honickman1986,p. 302)

The court set out the fol lowing guidel ines for the use ofsurveys in such cases:

A direct survey of public views probably cannot measure con-sumer understanding if a term identifies a product that arguablyconstitutes its own genus.


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A survey that inquires whether a designation suchas shreddedwheat is a brand nameor a product name forces respondentstomake a false dichotomy. Such a survey may not elicit real atti-tudes but merely answers developedon the spot that wouldbehighly susceptible to the influencesof survey phraseology.

Directly surveyingthe public without differentiating the prod-uct brand from the product genus, without first offering a defi-nition for the distinction, probably will not test the meaning ofwords to the public but instead request those surveyed to drawa legal conclusion.

Some comm entators have suggested thata survey, insteadof providing a definition of product brand and productgenus, may simply provide examplesof brand namesandproduct names (Greenbaum, Ginsburg,and Weinberg1983,pp . 101, 118). This methodology was employed in theTeflon survey in E.I. DuPont de Nemours & C o.v. YoshidaInternational Inc. (1975).The court reliedon this evidencein refusing to fmd the word "Teflon" generic. This surveypresented the example of "Chevrolet-automobile"to illus-trate what it meant by brand nameand product nameandthen asked the respondents to classify many names, only one

of which was Teflon.The practicehas not gained widespread acceptancein the

courts. In A.J. Canfteld Co. v. Honickman (1986, p. 303),the court tookthe position that"a direct surveyof the pub-lic alone furnishesus no more of a method for determiningthe relevant product genus,or of circumventingthe need tomake that determination, than that furnishedby the primarysignificance test."

Even when survey results appear to establish that the gen-eral public viewsthe word, phrase,or symbol as a brandidentifier, the public's association betweena mark and itsproponent is insufficient to elevate what is otherwise ageneric term to trademark status.In BellSouth Corp. v.

White Directory Publishers Inc. (1999), BellSouth intro-duced surveysof consumersto suggest that the generalpub-lic viewed its "walking fingers" logoas a brand identifier.Unfortunately for BellSouth, the survey results couldnotovercome several factors demonstrating that this logohadbecome generic. These factors included proof that

AT&T, after developingthe "walking fingers," immediatelydisclaimed any interest it might have had in the logo andencouraged allin the industry to displayit as the symbolof theyellow pages;

After use of the "walking fingers" proliferated throughtheindustry, AT&T not only acquiesced in such use but reaffirmedits disavowalof any trademark interest in the mark;

BellSouth's predecessors wereon notice of AT&T's policieswith respectto the symbol and the effects of its policies,andthey objectedto neither;

AT&T and its operating companies represented to one anotherand to all in the industry that the mark was in the public domainand acted accordingly; and

AT&T often usedthe logo, from the beginning, in nationaladvertisements that promoted general useof the yellow pages.

Therefore, the inherent weaknessin using surveysin thesecases is that they cannot circumventthe rule that the pub-lic's association betweena mark and its proponent cannotelevate to trademark status whatis otherwisea generic term(Abercrombie & Fitch Co:v. Hunting World Inc.1976).

Evidence of Use by the RegistrantProof that the trademark registrant usedthe mark in a waythat suggests genericnesscan be especially damaging. This particularly trueif the registrant has apparently madgeneric useof the term or has engagedin actions that appeato encourage membersof the publicto make genericuse ofthe term.

This principlewas illustrated in a recent casein which atrademark registrant's positionwas seriously weakenewhen the plaintiff, which urged cancellationof the markintroduced evidence thatthe registrant had itself usedthedisputed term "barbtie" (straps used to bundle wire) in ageneric sensein its own product advertisements.The courtgave little weightto the registrant's argument thatthe termused was properly understoodas a generic referenceto itsproduct (Thomas & Betts Corp.v. Panduit Corp. 1998).

Evidence of Use by CompetitorsGeneric use of a trademarked termby third-party compettors of the registrantas well as by the party seeking cance

lation of the mark is relevant evidenceof genericness.In rul-ing that the term "safari" was genericas applied to clothingassociated witha safari expedition but was not generic whused in other ways,a federal appeals court relied largelyonthe useof the term by the competitors. Despite the plain tiattempts to enforce its trademark, evidence established tmany storeshad been usingthe term "safari"in advertisinhats, jackets,and suits constitutingthe "safari" outfit.Noexample couldbe found, in contrast, of the use of the termby anyone other thanthe plaintiff and the defendanton mer-chandise other thanthe safari outfitand its parts. This justfied the conclusion that "safari"was a generic term onlwhen referring to this class of clothing (Abercrombie &

Fitch Co.V.

Hunting World Inc.1976).Indirect Evidence

Despite courts' preferencefor direct evidencein cases litigating genericness, indirect evidence alonehas sometimebeen sufficient.

Evidence from Publications

Courts increasingly takethe position that indirect evidensuch as newspaperand trade journal articlesand dictionarydefinitions shouldbe carefully scrutinized when offeredinlitigation over genericness(Berner International Corp. v.Mars Sales Co. 1993). The success rateof parties that resoto this evidenceis low.

For example, various news articlesand dictionaryexcerpts submittedin evidence to prove that the term U.S.Express wasor had become genericdid not persuadea courto cancel this trademarked nameon the ground of genericness, because it had not been shown that consumersopposed to those who wrote aboutthe air cargo industryassociated the term with freight delivery(U.S. ExpressInc.V. U.S. Express Inc. 1992).

tn another case, evidence that showed, among othings, that various cookbooks usedthe term "derby pie"ina generic senseto describe any chocolatenut pie was ruledless than persuasive, particularly becausethe other sidepre-


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strip mark owners of their brand name when it becomesused as a generic term, it would appear that the regulation isfailing. When examples such as "Band-Aid," "Lego," or"Rollerbla de" are considered, it seems puzzling why a brandsuch as "Thermos" went through genericide if public usagewere the only criterion used. Current regulation, as inter-preted by the courts, gives mark owners a good chance ofprotecting a name that has become widely used as a genericterm if the owner takes active measures to ensure that themark is not referred to as a generic term in advertising, incompetitors' advertising and promotional materials, and bythe media. If regulators believe that this is appropriate, thereis no need to consider additional legislation. However, ifpolicymakers believe that all brands that become genericallyused on a large scale should lose their mark, a new actwould need to be passed.

Suggestions for Further ResearchThe implications of this study suggest two areas that wouldbe fertile ground for further research. First, systematic

research on the value of a mark that is used generically by asubstantial segment of the public has not been conducted.The brand equity literature provides a strong theoreticalbasis that could be used as a platform to attempt to measurethe extent to which the recognition of a brand name as aproduct category descriptor becomes a corporate asset. Pos-sible anticompetitive effects of generic usage of a markcould be studied simultaneously.

A second research issue that should be addressed is thedevelopment of a measure that better captures the level towhich a brand name is becoming generic. As Simonson(1994) indicates, at the present time there is not agreementon which survey technique most effectively captures thisconstruct. Therefore, conflicting survey results are often

presented in court cases. Academic research on the validityof these techniques in light of the intent of the regulationscould help deal with this issue.

ConclusionEvidence from recent genericide cases suggests that thecourts weigh factors associated with a firm's advertising andpublic relations efforts as well as survey evidence. Ownersof trademarks that appear to have been used generically bymany m embers of the public have been able to protect tbem-selves by carefully monitoring how the mark is used in theirown and their competitors' advertising, as well as other usesmade by competitors and the media. Therefore, public rela-

tions staffs need to be prepared to take steps to ensure prop eruse of the mark.When a case is contested, there has been a marked trend

in recent years for courts to weigh credible survey evidenceheavily. For this reason, it is critical for a brand wishing toprotect its trademark to conduct and present well-designedsurveys that use an accepted methodology that presents thecase in a favorable light.

ReferencesAaker, David A. (1991),Managing Brand Equity.New York: The

Free Press.

(1996), "Measuring Brand Equity Across Products Markets,"California Management Review,38 (Spring), 102-20

Abercrombie & Fitch Co. v. Hunting World Inc.(1976), 537 F.24, 10-11 (CA2).

A.J Canfteld Co . v. Honickman (1986), 808 F.2d 29 1, 302 (CA 2

Barwise, Patrick (1993), "Brand Equity: Snark or Bo ojum?"Inter-national Journal of Research in Marketing,10 (March), 93-104

BellSouth Corp. v. White Directory Publishers Inc.(1999), 42F.Supp.2d 598 (M.D.N.C.).

Berliner v. Recordcraft Sales Corp.(1987), 1 U.S.PQ.2d (BNA2060, affd, 857 F.2d 1461 (CA 2).

Berner International C orp. v. Mars SalesCo . (1993), 987 F.2d 97(CA 3).

Burgunder, Lee B. (1997), 'Trademark Protection of ProdCharacteristics: A Predictive Model,"Journal of Public Policy& Marketing, 16 (Fall), 277-88.

BusinessWeek (2001), "The Best Global Brands," (August 50-64.

Cohen, Dorothy (1986), 'Trademark Strategy,"Journal of Market-

ing, 50 (January), 81-105 .(1991), 'Trademark Strategy Revisited,"Journal of Mar-

keting, 55 (January), 61-74.

Convenient Food Mart Inc. v. 6-Twelve Convenient Mart In(1988), 690 F.Supp. 1457 (D. Md. 1988), afr d (1989), 870 654 (CA 4).

Creative Gifts Inc. v. UFO(2000), 235 F.3d 540 (CA 10).

De Walt Inc. v. Magna Power Tool Corp.(1961), 289 F.2d 65(CCPA).

Donald F. Duncan Inc. v. Royal Tops Manufacturing Co.(1965)343 F.2d 655 (CA 7).

Door Systems Inc. v. Pro-Line Door Systems Inc.(1996), 83 F.3d169, 171 (CA7).

Dorr, Robert C. and Christopher H. Munch (1990),ProtectingTrade Secrets. Copyright & Trademarks. New York: WileyLegal Press.

E.I. DuPont de Nemours & Co. v. Yoshida International In(1975), 393 F.Supp. 502 (E.D.N.Y.).

Glover v. Ampak Inc.(1996), 74 F.3d 57 (CA 4).

Greenbaum, Arthur J., Jane C. Ginsburg, and Steven M. Wberg (1983), "A Proposal for Evaluating Genericism A'Anti-Monopoly, ' " Trademark Reporter, 73 (March/April101-27.

Haughton Elevator Co. v. Seeberger (\950),85 U .S.P.Q. 80.

Howard, Daniel J., Roger A. Kerin, and Charles Gengler (20"The Effects of Brand Name Similarity on Brand Source Cfusion: Implications for Trademark Infringement,"Journal ofPublic Policy & Marketing,19 (Fall), 250-6 4.

J. Kohnstam Ltd v. Louis Marx & Co.(1960), 280 F.2d 43(CCPA).

Jacoby, Jacob and Maureen Morrin (1998), '"N ot ManufactureAuthorized by ...': Recent Federal Cases Involving TrademDisclaimers," Journal of Public Policy & Marketing, 17(Spring), 97-107 .

Kamakura, Wagner A. and Gary J. Russell (1993), "MeasuBrand Value with Scanner Data,"International Journal ofResearch in Marketing, 10 (March), 9-21 .

Keebler Co . v. Rovira Biscuit Corp.(1980), 624 F.2d 366 (CA 1


8/9


Keller, Kevin Lane (1993), "Conceptualizing, Measuring, andManaging Customer-Based Brand Equity,"Journal of Market-ing, 57 (January), 1-22.

K e l l o g g Co. V. N a t i o n a l B i s c u i tCo . ( 1 9 3 8 ) , 3 0 5 U . S . I l l , 1 1 8(U.S.).

Kern's Kitchen Inc. v. Bon Appetit(1988), 850 F.2d 692 (CA 6)(unpublished opinion).

King-Seeley Thermos Co. v. Aladdin Industries Inc.(1963), 321F.2d 577 (CA 2).

Kopp, Steve W. and Tracy A. Suter (2000), 'Tradem ark StrategiesOnline: Implications for Property Protection,"Journal of PublicPolicy & Marketing, 19 (Spring),119-31.

Magic Wand Inc. v. RDB Inc.(1991), 940 F.2d 638 (CA Fed.).

McCarthy, Thomas J. (1998),Trademarks and Unfair Competi-tion, 4th ed. Rochester, NY: Lawyers Co-operative PublishingC o .

Morrin, Maureen and Jacob Jacoby (2(XX)), 'Trademark Dilution:Empirical Measures for an Elusive Concept,"Journal of PublicPolicy & Marketing, 19 (Fall), 265-76 .

Oakenfull, Gillian and Betsy Gelb (1996), "Research-Based

Advertising to Preserve Brand Equity but Avoid 'Genericide,'"Journal of Advertising Research, 36 (September/October),65-72.

Park, Chan Su and V. Srinivisan (1994), "A Survey Based Methodfor Measuring and Understanding Brand Equity and ItsExtendibility," Journal of Marketing Research, 31 (May),271-88.

San Francisco Arts & Athletics Inc. v. United States Olympic Com-mittee (\9S7), 4S3 U.S. 52 2.

Scott V. Mego Interna tional Inc. (1981) , 519 F.Supp . 1118 (D.Minn.).

Simon, Carol J. and Mary W. Sullivan (1993), 'The Measurementand Determinants of Brand Equity: A Financial Approach,"Marketing Science, 12 (Winter), 28-52.

Simonson, Itamar (1994), "Trademark Infringement from theBuyer Perspective: Conceptual Analysis and MeasurementImplications,"Journal of Public Policy & Marketing,13 (Fall),181-94.

Smith, Daniel C. and C. Whan Park (1992), 'The Effect of BrandExtensions on Market Share and Advertising Efficiency,"Jour-nal of Marketing Research,29 (August), 296-31 3.

SS KresgeC o . v. United Factory Outlet I n c . (1979), 598 F.2d 69 4(CA I).

Swaan, Jerre B. and V incent N. Palladino (1988), "The Validity ofDual Functioning Trademarks: Genericism Tested by Co nsumerUnderstanding Rather Than by Consumer Use,"TrademarkReporter, 69 (5), 357-76 ,

Thomas & Betts Corp. v. Panduit Corp.(1998), 138 F.3d 277 (CA7 ) , cert, denied (1998), 119 S.Ct. 336 (U.S.).

Trademark Act (1946), 15 U.S.C. sees 1051-127.U.S. Express Inc. v. U.S. Express Inc.(1992), 799 F.Supp. 1241

(D.D.C.).

Wilson, Lee (1998),The Trademark Guide. New York: AllworthPress.

WSM I n c . V.Hilton (1984), 724 F.2d 1320 (CA 8).

Yo o , Boonghee, Naveen Donthu, and Sungho Lee (2000), "AnExamination of Selected Marketing Mix Elements,"Journal ofthe Academy of Marketing Science,28 (2), 195-211.


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