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Generic Terms Part 2: Turn on the Lights in Your Brand Space and See who else is there!
© Cheryl Hodgson 2008 | Posted on May 4, 2008
One of my first important trademark clients as a young lawyer was TACO TIME®, an early entrant into the franchise market, which was started in the early 1960’s in Eugene, near the University of Oregon campus. The company had secured a federal registration for their mark TACO TIME®. Then for the next 20 years, they didn’t pay much attention to the other companies that had entered the market. Without expert counsel, they had allowed many other registrations to slip through without objection at the Trademark Office. There were several dozen trademarks for restaurants containing the word “taco” together with another word, including a recent entrant into the market, TACO TOWN. This company had adopted the same lettering style, as well as the same “cactus” in between the words as had been used by TACO TIME since its inception and was seeking a federal trademark registration.
Since they had selected a mark with the generic word “Taco” my client’s protection was limited to their precise words, or marks that would be considered “confusingly similar.” A non- identical mark can be confusingly similar if there is similarity of sight, sound or meaning, or a combination of the three.
Registration of a mark is just the beginning. Brand equity must be built, and its owner must “police” the market for identical and confusingly similar, which TACO TIME had not learned. I advised the client to object to this registration, since it was about as close as one could get without stealing their brand completely. The case was brought before the Trademark Trial and Appeal Board, and then went on appeal to Federal Circuit. I engaged the expert assistance of J. Thomas McCarthy, known for his famous treatise on trademarks, and then professor of Trademarks in San Francisco. Tom went on to counsel other brand owners such as COCA-COLA. Together we crafted the brief which we felt supported our client’s right to stop the registration for TACO TOWN.
The result? Sadly, we lost. The market was simply too crowded with generic usages of “taco” and, drawings of a cactus. Even same lettering style and a second word beginning with a “T” was not enough.
TACO TIME found itself with an extremely weak brand, which can only impact the value of the company’s good will as an asset, and make future efforts to prevent further with infringements an exercise in futility, and costly to boot. Going forward, I urged my client to modernize the look and feel of its logo. They agreed.
New businesses can avoid finding themselves in this situation by avoiding use of generic terms in their marks. All trademark owners need to monitor the market regularly and take action when new entrants come too close to their brand. Failure to police a mark and monitor usage of others, is like walking into a dark room but never turning on the lights to see who else is in the room. Stay in the dark, and you’ll never know who you may bump into, how long they’ve been there, and what might just hit you on head. This is the room or zone of protection of your brand. Turn on the search lights and take a look around for possible intruders. Don’t wait until it’s too late.
Technorati Tags: generic terms, McCarthy on Trademarks, police your mark, TACO TIME, trademark protection, trademark registration
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