Legal Question in Intellectual Property in Minnesota

Re: Trademark use

This is so the trademark does not become "genericized," whereas the trademark becomes the name of the class of goods or services. An example would be aspirin. It was a trademark for a pain reliever (i.e., Aspirin brand pain reliever.) Kleenex and Thermos are have either become generic terms for tissues and vacuum bottles or are darn close. Thus, using the trademark as a descriptor (adjective) modifying the noun and always tying it to the noun help preserve the trademark owner's trademark rights.

Re: Trademark use

I think that you are describing the problem where a brand name is used as a short-hand for the brand-name-plus-product. This problem is not limited to nouns.

For example, people often talk about a Kleenex, rather than "Kleenex-brand facial tissue", or Q-tip rather than "Q-tip brand cotton swab". This is ultimately the kiss of death for a trademark -- famous examples include Nylon -- where a mark loses trademark significance and becomes generic. And you have probably seen the commercials run by Xerox to address the short-hand verbal use of Xerox as short-hand for "make a copy using a Xerox-brand copier" (or worse, some other brand of copier) whereby the company is frantically trying to preserve the mark's trademark significance.

Hopefully, the foregoing answers your question. Best wishes,

LDWG

Re: Trademark use

Sorry for the delayed response. I have been on vacation.

You have not really gotten an answer to your question whether "nouning" a trademark is illegal. The answer is NO, it is done pretty regularly by some companies, such as COKE or PEPSI.

Sometimes a trademark gets so famous as a trademark, that use of the descriptive term is implicit and thus unnecessary. When you see "COKE" you know it is a brand of cola. Same thing for PEPSI, FORD, CHEVY, X-BOX, and many more. This is particularly true where there are several prominent brands...such as BUDWEISER, MILLERS, BUSCH, COORS, MICHELOB, etc for beer. Anheuser Busch once had an ad jingle "When you've said BUDWIESER...you've said it all". That would be meaningless if everyone didn't know Budweiser is a brand of beer. HUGGIES & PAMPERS for diapers or CREST, COLGATE, AQUAFRESH & IPANA for toothpaste are similar examples. Another similar situation is where a brand name works for many products...for example, SONY, which is a brand name for so many things that a customer can't just go in and order a SONY, without saying more.

Likewise, on products, it is not always necessary to put the generic name, particularly when the name is obvious. You don't see the name "television set" after the brand name ZENITH on a TV because everyone knows it is a TV.

The problem of loss of a trademark through it becoming generic is why trademark newbies make general usage rules such as "always use a trademark as an adjective like French in French dressing." This helps protect against "genericide", but as I have described above is one of those rules that begs to be broken and, when knowledgable marketing personnel and knowledgable trademark lawyers are at work, can be broken in special situations without any major risk. The trick is being experienced enough to know when to noun a trademark and when not to do so.