Re: Product trademarks (was "copyrights")

Paul Heald <heald[_at_]jd.lawsch.uga.edu> writes:
>
> In order to convince me of this, you're going to have to cite me
> a case where a trademark owner was disadvantaged by not using either
> the registration symbol of the "TM" symbol in advertising. The
> practice for years and years was not to use them everytime the
> product trademark name was mentioned in advertising. Nothing in the
> law has changed--only professional practice. Why the change?
> Intimidation, maybe?
>

Well, there are numerous cases in which a plaintiff's use of its own mark in a generic sense is evidence of genericness. See 2 McCarthy on Trademarks sec. 12.13, and cases cited therein. While this is not exactly the same thing as using your mark without a "TM," there is certainly a relationship between the two, as using the TM or R symbols indicates intent to claim a source-identifying function for the mark, and may therefore stave off genericness.

Further, generic use by the media is highly relevant to genericness. (see McCarthy again, at sec. 12.13). McCarthy acknowledges that trademark owners have no legal power to force people to use TM or R symbols, but suggests that they try. McCarthy sec. 12.28.

BTW, a great example of the shift Paul is referring to: the "Band-Aid" jingle has recently been changed from "I'm stuck on Band-Aids, 'cause Band-Aids stuck on me" to the rather less artful "I'm stuck on Band-Aid brand, cause they are stuck on me."

Mark Lemley
Assistant Professor, University of Texas School of Law Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

For information on the Intellectual Property program at UT, see http://www.utexas.edu/law/intelprop/ Received on Wed May 21 1997 - 19:39:42 GMT