What began as a trademark infringement case, developed into a battle of possible “genericide” when two popular moving and storage companies went head-to-head in federal court. Back in 2012, PODS sued U-Haul for trademark infringement for its use of “pods” under both state and federal laws. U-Haul countered that it was not infringement, because pods has become a generic term and has lost its distinctiveness in the market. Read More
Trademark Abandonment Trademark Abandonment – Under section 45 of the Lanham Act a mark will be abandoned under certain circumstances: (1) When its use has been discontinued with intent not to resume such use. There are two parts to this element. “Intent” may be an actual statement, or implied by circumstances. What continues a discontinuation of use is tougher to determine by implication, but we have a bright line rule that three consecutive years of nonuse is prima facie evidence of trademark abandonment. Prima facie is a fancy Latin expression generally taken to mean ‘legally sufficient’ but with the caveat… Read More
Genericide: How Success May Cancel A Trademark Genericide Discussion – What do the terms “Thermos,” “Aspirin,” and “Yo-Yo” have in common? They are all very successful products that have actually lost their trademark protection under the Lanham Act due to a doctrine known as Genericide. In general, when accused of trademark infringement, one of the common defenses is “genericness.” This defense says that the term is so broad that it doesn’t actually identify a unique source but instead describes an entire class of products. A term may inherently be generic (“bed”) or may become generic through genericide (“Murphy bed.”) Here we’ll look… Read More