Looking at Two Sides of Trademark Infringement

A generic trademark is a product name or term which is the actual name for that product. Examples include: BANANA for bananas, or LAW FIRM for a law firm or CHICAGO TRADEMARK ATTORNEY for Chicago trademark attorney. A generic term is not eligible for trademark registration or protection. The rationale being, to allow a business or individual the exclusive right to that term would give them an unfair monopoly and advantage over all other businesses that need to use the term to describe the product. Imagine the first person to register APPLE being able to prevent all other apple pickers or fruit stands from using the term APPLE to sell apples. All subsequent users would have to describe their product as somewhat round red edible object.

Registered trademarks do face the unfortunate potential to become generic. This is called trademark genericide. Genericide occurs when the meaning of the registered mark becomes associated with the actual name of the product. As a result, the trademark can no longer identify and distinguish the source of the product that bears the generic term. Some examples of former trademarks that became generic include: ASPIRIN, THERMOS and VELCRO.

A recent case out of a New York federal district court ruled on a suit brought by Tiffany & Co. (“Tiffany’s”) against Costco Wholesale Corporation (“Costco”). Costco was describing a couple of their engagement rings as a TIFFANY ring or containing a TIFFANY SETTING. The problem with this is Tiffany’s owns several registrations for TIFFANY for use in multiple trademark classifications relating to jewelry. As a result, Tiffany’s brought an action based on trademark dilution and trademark infringement, among other claims. Costco filed a counterclaim, requesting the judge to find the terms TIFFANY and TIFFANY SETTING as a generic term for a specific style of ring (a ring with six prongs) and not as a source identifier, thus, cancelling the trademark registration held by Tiffany’s.

During a trademark infringement claim, the likelihood of confusion test is what is determinative to the outcome of the lawsuit. While all factors of the test must be viewed as a whole, some factors that can certainly be persuasive include: 1. the similarities between the two marks, 2. the similarities between the goods offered in connection with the trademark, and 3. if there has been any cases where consumers are actually confused as to the source of the good. In Tiffany’s v. Costco, the court found that the marks being used were identical (TIFFANY and TIFFANY SETTING). Further, the court found the the goods associated with the marks were identical (engagement rings). Lastly, Tiffany’s submitted evidence proving that there had been cases whereby actual consumers were confused as to whether Costco was now selling authentic Tiffany’s rings.

Another factor that played an important role in the court’s ruling, was the use of consumer survey evidence. In any trademark infringement case, consumer surveys are a must in a successful prosecution or defense. Here, Tiffany’s conducted a survey of over 450 men and women, where 9 out of 10 who participated, associated TIFFANY as a source identifier and not as a generic term for a type of ring or setting.

After looking at all the evidence submitted in the case, the court held that the term TIFFANY is not a generic term for a type of ring or a type of diamond setting. This resulted in granting summary judgement in favor of Tiffany’s on all of their claims.

If you believe your trademark is being infringed by another, or you need to defend yourself against a trademark infringement or other commercial litigation, contact our trademark and Chicago commercial litigation attorney.  Our corporate lawyers have experience guiding clients through the litigation process or advising clients whether use of a certain term would violate an existing trademark rights.

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