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Bananas, Chutzpah And Other Ridiculous Trademarks

Publication Date: 
February 17, 2013
Source: 
San Francisco Chronicle
Author: 
James Temple

Professor Mark Lemley is quoted by the San Francisco Chronicle's James Temple on whether a company can own the commercial rights to two consecutive words regardless on if they have trademark protection of the term. 

In late 1994, Newsweek published an article titled "The Age of Cybercash" that informed readers: "Your virtual wallet may soon be here."

By the end of 2007, the term "virtual wallet" had appeared more than 700 times in the English press, including in American Banker, the Economist, the New York Times and Consumer Reports.

...

The company can go after competitors for using its trademarked term for commercial purposes, but it has no legal power to stop the press or public for using two words in lower cases, said Mark Lemley, a Stanford law professor focused on intellectual property. All PNC can hope to do is persuade us all to change the way we apply the term.

...

"The question is whether the public was using this as the general term for this kind of service before (PNC) started using it as a brand," Stanford's Lemley explained in an e-mail.

"Even if it wasn't in use as a generic term, it is at most 'descriptive' because it describes characteristics of the service they are offering," he added.

"Brand owners aren't entitled to rights in descriptive terms unless they can prove that through advertising and long use people have come to associate the term with their product specifically."

Companies have a mixed record when it comes to retaining their trademarks as terms slip into generic use. Aspirin, escalator, thermos and cellophane all lost trademark protections, Lemley said. But Xerox and Jeep managed to pull their terms back from the brink, somehow successfully nudging along the alternatives "copy" and "sport-utility vehicle"