Generic Fair Use

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Tag: generic marks

That’s Not How Any of This Works! Cultural Phrases and the Failure to Function as a Trademark

As of this morning, there are seven (7) pending applications with the United States Patent and Trademark Office (USPTO) to register some variation of OK BOOMER as a trademark.[1] Thanks in part to the New York Times article in October, the casually dismissive phrase “ok, boomer” went from a limited internet audience to a mocking cultural term du jour. Inspired would-be entrepreneurs rushed to file applications with the USPTO to “own” this phrase as a trademark.

It is unlikely any of these applications will mature into a trademark registration. Simply put, this is not how trademarks work. Following in the footsteps of such whimsical terms like COVFEFE, TACO TUESDAY, and ALTERNATIVE FACTS, most of these alleged marks will fail to acquire a registration from the USPTO.

Because they almost certainly fail to function as trademarks.

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The Shape of Things: Gibson sues Dean Guitars for Trademark Infringement

In May 2019, Gibson Brands, Inc. sued Armadillo Distribution Enterprises, Inc. for trademark infringement, unfair competition, and counterfeiting.[1] Armadillo may not be a well known name, but it is affiliated with the guitar brands Dean Guitars and Luna Guitars, which compete with Gibson. Gibson is one of the most prominent names in the electric guitar industry, alongside Fender. In this lawsuit, Gibson accuses Armadillo/Dean of infringing at least four “body shapes” of its electric guitar models: the Flying V, the Explorer, the ES, and the SG, each of which Gibson cites as a registered trademark.[2]

This case caught my attention because I am a guitar player and I often write about music and the music industry as it relates to trademarks and copyrights. Here are just a few examples. I do not personally own any Gibson-branded guitars (they are too heavy in the neck), but I do own one acoustic Dean Guitar – though not one of the types that is accused of infringement in this case. With regard to electric guitars, I prefer Schecter Guitars. Always a Hellraiser™.

Armadillo has not yet responded with an Answer to this lawsuit, but I anticipate Dean Guitars will present a substantial defense to all of Gibson’s claims. It is important to note that this is not a patent case. This is not about who “invented” the particular shape or style of an electric guitar. Any patent rights for these designs would have expired decades ago. Instead, this dispute concerns trademarks. It essentially seeks to determine whether a particular shape of a guitar evokes a specific source in the minds of the relevant consuming public. With regard to the guitar industry, there is a long history associated with these particular “body shapes” and how they impact pop culture and the competition between the most popular brands and manufacturers.

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No, Gene Simmons is not going to get a Trademark Registration for the “Devil Horns” hand gesture. No.

On June 9, 2017, Gene Simmons – the bass player and lead tongue of the classic rock band KISS – filed an application to register a trademark. This by itself is not newsworthy. Gene Simmons has previously sought to register hundreds of words, slogans, and logos he has identified as his personal trademarks. What caught everyone’s attention this time was the subject matter: Gene Simmons asserts that the “devil horns” hand gesture is a trademark that he owns. Yes. A hand gesture. A gesture seen at every single live music event today.

Without belaboring the point, Gene Simmons is not going to acquire a registration for this alleged trademark. This hand gesture is not a trademark. Nor would it belong to Gene Simmons even if it were a trademark.

At the risk of giving too much attention to a frivolous application, here are a few reasons why this application is going to fail.

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Has the OREO trademark become generic?

Generic trademarks are no joke. Earlier this week, the Trademark Trial and Appeal Board ruled that the trademark BOOKING.COM was generic for travel agency and hotel reservation services. Legally speaking, if a mark is generic, it no longer serves the purpose of a trademark and cannot be protected or enforced against third party uses. According to the TTAB’s ruling, booking.com operates to essentially identify the product itself and does not operate as a source-identifier to customers. Therefore no one is entitled to exclusive use of this term in commerce.

This news triggered a few things in my mind. Recently, a friend of mine and I had lunch at a nice restaurant in the Houston area. This restaurant offered a particular dessert offering – a dressed-up, fancy Oreo cookie.[1] Now, being a trademark nerd, I noticed the lack of any trademark designation on the menu listing. No ™. No ®. And no disclaimer in the fine print suggesting that “Oreo” is a trademark owned by someone else and licensed to this restaurant. Nothing of the sort. My friend and I joked about this for a while until it occurred to me that I may have stumbled upon something interesting:

Has OREO become a generic term that no longer functions as a trademark?

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Coca-Cola is trying to claim trademark rights to “ZERO.” Billy Corgan must be inconsolable.

Did you know that The Coca-Cola Company applied to register a federal trademark for the term “COCA-COLA ZERO”?  It is true.  Coca-Cola filed the application with the USPTO on March 4, 2005.[1]  The application was published for opposition on April 17, 2007.  Not surprisingly, the companies that own Dr. Pepper and 7-Up immediately opposed this registration.[2]  The battle has been ongoing for over eight years now.

Without going into too much detail, an executive for Coca-Cola testified recently that there are twelve Coke products that use the term ZERO in the product name.[3]  This includes Coke Zero, Cherry Coke Zero, Vanilla Coke Zero and others.  This is consistent with Coca-Cola’s trademark application, which identified the relevant goods and services as “Beverages, namely soft drinks; syrups and concentrates for the making of the same.”[4]  Nevertheless, the “ZERO” part of the mark almost certainly refers to the marketing of these specific products as having “zero calories” per serving size (i.e., one can or bottle).  This presents a series of interesting trademark concepts.

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