Legal Question in Intellectual Property in New York

Re: misuse of trademark compared yo adverse possession

A trademark not protected is a trademark lost. That's the simple and basic answer subject, of course, to a myriad of exceptions and limitations developed by the courts and, in some cases, codified. But you've the essential understanding.

Re: misuse of trademark compared yo adverse possession

Well, yes, there is a certain commonality in the concepts. Your point is well taken.

But there is a significant distinction. Adverse possession comes about when an individual owning an adjacent parcel adversely occupies the land under a claim of right, and the result is that the individual gets to add that piece to his existing parcel.

What you describe as "trademark misuse" is actually use by the public of a trademark as a generic term ... e.g. aspirin, cellophane, escalator. As a result of the trademark losing its distinctiveness as indicating a particular source, the trademark just stops being a trademark and becomes part of the English language. No single other company gains rights to the trademark; rather it becomes part of the "public domain." That's different from adverse possession, where an individual takes over the property in issue.

A different aspect of trademark law arises when a company abandons a trademark. When that happens, an unrelated company can adopt the "abandoned" mark, even for similar goods (provided that it does not palm off the goods as those of the abandoning company). That's also sorta similar to adverse possession, in that first one company owned the trademark and now another one does.

An intriguing sidelight is that for a long time, it has been said that a trademark should always be used as a "brand name" with the part of speech being denominated a "proper adjective" as in Band-Aid brand adhesive bandage. Folks were cautioned against using the term as a verb, e.g. "to band-aid" something, or "to xerox" a document, because they felt it would hasten the day that the trademark would be found to have lost its distinctiveness and to have become a generic term. Recently, a trademark lawyer for the Google search engine published an article questioning that traditional "wisdom." That lawyer argues that case law supports the proposition that the term Google is still a trademark if everyone saying "to Google" a particular search term, e.g. the name of a person, understands that they would accomlish that via the Google search engine, and none other. That argument makes sense to me.