January 21, 2014

Trademark Case Law Time Machine- Generic Marks

by Stites & Harbison, PLLC


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By Anonymous [GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons[/caption]Trademarks are the berries, but you can lose them if you aren't careful. Just ask the poor paulies over at Bayer, because Bayer's trademark for "aspirin" just got fit with a pair of concrete goulashes, see? On April 14, 1921, in Bayer Co., Inc. v. United Drug Co., Judge Learned Hand found Bayer's "aspirin" trademark had become generic to regular consumers, therefore letting any Tom, Dick, or Harry use the term "aspirin" when selling the pain relieving elixirs directly to the purchasing public.

For ages, Bayer made a pain relieving product called "acetyl salicylic acid" and sold it as "aspirin." Chemists, physicians, pharmacists and other pencil necks knew that the generic word for the product was "acetyl salicylic acid" and that "aspirin" meant only Bayer's product. After a few years, some scoundrel manufacturer-types starting pawning the tablet form of the chemical directly to customers, using the name "aspirin." Bayer eventually tried to reeducate the public that "aspirin" came only from Bayer. Finally, Bayer sued one of the manufacturers, United Drug, for selling "acetyl salicylic acid" as "aspirin."

Learned Hand said that the question of whether a trademark had become generic was "whether the buyers merely understood that the word 'aspirin' meant this kind of drug, or whether it meant that and more than that; i.e., that it came from the same single, though, if one please anonymous, source from which they had got it before." Golly, that fella' sure knows his onions. Judge Hand divided the consumers into two groups. For the chemists and manufacturers, he found that the term "aspirin" meant Bayer's "acetyl salicylic acid." But, to the average apple knocker out there, he found that "aspirin" was the generic name of the medicine.

So, feel free to ask for "aspirin" the morning after getting scrooched at your local juice joint. But, when that headache goes away, make sure to keep an eye on your own trademarks to make sure they do not become generic:

Use the trademark as an adjective, not a noun or verb. Bayer's attempts to reestablish the connection between "aspirin" and Bayer only made matters worse. Bayer used the term "aspirin" as a noun instead of an adjective, advertising its product as "Bayer- Tablets of Aspirin."

Use capital letters when using the mark in text to make it clear it is not an everyday word.

Federally register your trademarks and use your trademark symbols. ® for federally registered trademarks and ⢠for unregistered marks.

If no generic term exists for the product, make one up. Bayer could have called its product "ASPIRIN® brand pain-reliever."

Keep your eyes peeled for infringers and people using your trademark as the generic word for the product, and act swiftly to remedy the situation.

We depart your company with an ode to all the Flappers that got half-seas over on too much giggle water at a rub in bygone days and found comfort in the arms of aspirin.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.