Ever present in our business communications are requests for conference calls to be held using video conferencing platforms. However, these requests are generally not quite so long-winded when our colleagues describe them.
Instead, it’s more common to see a request for a “Zoom Call” or a “Meeting By Zoom” – but most recently, I received an email from a secondary school teacher regarding a calendar invite for “The Zoom” and from a fellow lawyer, who offered to circulate “a Zoom.” (In both cases, I assume that what they meant to say was that they were sending a “calendar invite for a video conference being set up through Zoom’s platform”.) But I get it. That’s a lot of words.
As a trademark attorney, however, every time I see one of these quickly-worded references to trademarks owned by others, I cringe. I know there’s no intent to undermine someone else’s trademark rights, or to devalue hard-won brands. And, at the same time, it’s clear that brands like “ZOOM” are quickly becoming household names, especially given this “it’s-quarantine-we’re-all-working-from-home” environment.
Becoming a household name is good . . . right? In the trademark world, I humbly suggest that “no, not all press is good press” and certainly not when used like that. If a carefully developed, original brand name suddenly becomes the generic term for a broader type of product or service, what happens to that investment in the development of this brand from its inception? Short answer – the value of that investment could be completely eliminated.
Former Trademarks – Now Generic Terms
Consider the following former trademarks, which have lost their unique association with the specific source for the goods/services delivered under the marks, prohibiting the original owners from excluding others from using these terms to describe their own (similar) goods or services:
- MIMEOGRAPH – Reg. No. 356,815 – Registered as a “coined word” on May 10, 1938 in connection with “flexible writing plates” with a first use date of March, 1932. This registration expired on February 26, 1986 when it was not renewed by the owner of the mark, A.B. Dick Company. Note: There is a notation in the TSDR record that a cancellation action was filed December 5, 1983, but the records are old enough that they are not available electronically through TTABVUE. For an interesting history of the development of the machine sold under the MIMEOGRAPH mark, see “A.B. Dick Company, est. 1884,” Made in Chicago Museum Blog (available as of Sept. 1, 2020).
- ZIPPER – Reg. No. 399,503 – Registered on January 12, 1943 in connection with “conveyor or transmission belting composed chiefly of fabric and/or natural rubber or synthetic compounds having the characteristics of rubber.” This registration expired on January 10, 1986 when it was not renewed by its owner, B.F. Goodrich & Co. Notably, the USPTO lists the location of the file history for this registration as “file destroyed” on June 1, 1989.
- ESCALATOR – Reg. No. 34,724 – Registered as an “arbitrary word” on May 29, 1900, to Charles D. Seeberger, assigned to the Otis Elevator Company, and renewed May 29, 1930, in connection with “passenger elevators”. The Registration was cancelled in 1950 because the word had become generic for moving staircases instead of an indicator of the source of these staircases; the Registrant itself even used the term generically in its patent applications and magazine advertisements to refer simply to the types of stairs, not to its own brand of these stairs. Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (Comm’r Pat. 1950) (mark cancelled after being registered for 50 years).
- ASPIRIN – In use in the U.S. since 1899 as an “artificial trademark” associated with a patent for the drug, acetyl salicylic acid. Bayer started to sell the product directly to the public beginning in 1915, under the label “Bayer – Tablets of Aspirin.” The patent expired in 1917; a patent examiner thereafter declared the trademark no longer valid and ordered its cancellation on November 30, 1918. Bayer did not appeal the cancellation, but instead sued United Drug Company for trademark infringement relating to its use of the name “Aspirin” in connection with sales of a competing product (same formulation). The district court concluded there was no infringement because “ASPIRIN” was the generic name for the drug and Bayer had no exclusive rights in it after the patent expired and given its own generic use of the term. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (Learned Hand, J.); accord In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007) (“Aspirin is generic for analgesics and has been generic for this class of pharmaceuticals for over eighty years.”).
- TRAMPOLINE – Reg. No. 402,868 issued August 17, 1943 in connection with “tumbling devices, consisting of canvas sheet stretched by springs in a rigid framework”, with a first use date of March 27, 1935. In a thorough discussion of the common uses of the term “TRAMPOLINE” in the marketplace in connection with these types of devices, a district court concluded that the term was generic for these goods, invalidated the trademark registrations and dismissed a complaint for trademark infringement that the Registrant had filed against a competitor. Nissen Trampoline Co. v. Am. Trampoline Co., 193 F. Supp. 745, 748, 749 (S.D. Iowa 1961) (“The court finds that the term ‘trampoline’ is completely generic for the type of goods here involved; that the plaintiffs have no secondary meaning in the term ‘trampoline’ and the purchasing public does not understand the term to mean the plaintiff’s product or to represent the equipment of only a single manufacturer.”).
Do you associate these terms with a single source of the goods or services with which they used to be associated? Certainly not. These once-unique brands have now become generic. They can no longer be used to identify the single company that is known to provide these specific goods and services branded under these specific marks.
How to Properly Use a Trademark
Rather than turning these unique brands into common terms that can no longer function as trademarks (i.e., can no longer function as a source indicator for a single source of goods or services), brand owners and consumers alike should be looking at brand names as adjectives, not as nouns.
To avoid delving into a boring grammar lesson, consider this: if you walk into a store and say “I’m looking for facial tissue” or “where can I find copy paper” – are you asking for a certain brand? No. You’re looking for a specific type of product, regardless of what brand it is.
In contrast, what if you saw a sales circular and found out that a particular brand name of facial tissues were on sale – would you want to ask for them by brand name? Sure – if you want the sale price. Would you be happy with getting a box of facial tissue of any brand for this purpose? Probably not – particularly if there were a big price difference, and you were shopping specifically for that item at that price.
Trademarks can also help companies (and the ultimate consumers) differentiate their goods from the goods of others – particularly if there’s a significant difference in qualities or features of the brand name product. For instance, perhaps a particular brand of dishwasher is the only one to include a garbage disposal or is particularly well known for its quiet operation. Or perhaps a specific brand of photo printer paper is well known for its color saturation or the clarity and long-life of the image printed onto it. These are features that consumers might shop for specifically – and being able to request that specific product by its unique trademarked name provides additional value to consumers and allows manufacturers to distinguish its goods from those of its competitors.
As a result, even among the sea of ZOOM calls we are participating in or merely watching, we should endeavor to use trademarks correctly: to refer to a single source of particular goods or services and to avoid genericizing those valuable brands. For instance:
- Use marks as adjectives to describe the actual source of goods or services, followed by the generic product name (e.g., KLEENEX facial tissue or MAYTAG dishwashers).
- Never use the mark as a verb (e.g., Say “I’m going to use a Xerox copier . . . ” but not “I’m going to xerox that document.”).
- Never use the mark as a noun or make it plural (e.g., Say “BAND AID bandages” but not “BandAids”).
- See a prior post on this blog: “Have We Lawyers Genericized ‘Bates’ Numbers?” (published Oct. 14, 2010).
- Zoom Video Communications has one registration and several applications for registration of its marks: ZOOMTOPIA (Reg. 6,084,179 for educational services relating to video conferencing and communications; App. Ser. No. 88/923,364 for downloadable computer software), ZOOM (App. Ser. No. 88/016,782 for video cameras, microphones and video display monitors), ZOOM (& designs) (App. Ser. Nos. 87/557,217, 88/920,458 and 88/921,775 for audio/video conferencing, for software as a service and for downloadable computer software), ZOOM ROOMS (App. Ser. No. 87/926,427 for downloadable software re audio and video conferencing), ZOOM ROOMS (& designs) (App. Ser. Nos. 88/919,819 and 88/919,896 for software as a service and for audio/video teleconferencing and data transmission/reception). Its current applications are either suspended because of prior filed applications or have been preliminarily refused based on an asserted likelihood of confusion with prior registrations.
- Brand Guidelines for use of the ZOOM Mark – published by Zoom Video Communications, Inc.
- Mary Beth Quirk, “15 Product Trademarks That Have Become Victims Of Genericization,” Consumer Reports (July 19, 2014).
- “Xerox: avoiding a ‘genericide’ headache,” World IP Review (May 17, 2016).
- Whitson Gordon, “How a Brand Name Becomes Generic: Pass the Kleenex Please,” The New York Times (June 24, 2019).