Trademarks and generic names
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I’m running a couple months behind on this but I’m finally getting around to commenting on the issue that Bill Poser posted about the eventually aborted effort by Dell to register, trademark and thereby prevent other companies from using “cloud computing.” It seems to me that Dell’s effort illustrated one of the struggles that both the Patent and Trademark Office and trademark lawyers have when they try to deal with the conventionally accepted (but sometimes difficult to define) trademark categories.
In case you aren’t too sure about the interesting language of trademark categories, let me give a simplified overview. They include fanciful marks (coined words like Exxon oil or Kodak cameras), arbitrary marks (words that convey a very different meaning from the way they are known and used (like Glad wrap), suggestive marks (words that cause the reader to make a “mental leap” to associate the product with the name, like Tide laundry soap), and descriptive marks (words that simply describe the qualities, ingredients and characteristics of a product, like Chapstick lip balm and Raisin Bran cereal).
Although most trademark disputes take place in that murky area between descriptive and suggestive (along with considerable speculation about how to define and measure that required “mental leap”), once in a while corporate lawyers will get desperate and try to register, trademark and protect descriptive or even generic marks, often with little or no success.
One example of such an effort took place in 1992 in the case of Registry Hotel Corporation d/b/a Hospitality Management Corporation v. American Hospitality Management Company (US District Court, District of Minnesota Third Division, Civil Action No. 3-92-852). Registry’s lawyers claimed that even though “hospitality management” may be descriptive, it is not generic, and therefore their client had the exclusive rights to use that name because of the fame and promotion it had invested in it. This means that because of Registry’s extensive marketing and promotion (creating what they hoped would be evidence of strong secondary meaning), their lawyers believed that they should prevail even if the court found that “Hospitality Management” was descriptive. Lawyers for defendant Hospitality Management asked me for whatever linguistic assistance I could offer about whether “Hospitality Management” was a generic mark.
To answer this question, I began by conducting data based research of magazines and newspapers written in the ten-year period prior to the case. I found some 300 different citations of “hospitality management,” including 47 service companies that included these words in their titles, and 44 academic training programs at universities and other schools that used those exact words to describe their programs and courses. If Registry wanted to go after hundreds of potential violators for this broad, general use, they could give it a shot I suppose, but their mark was looking pretty generic.
In addition to its common and general use, other characteristics of a generic word or expression are its grammatical flexibility and an increasing frequency of use. Grammatical flexibility means that it has the ability to move dynamically across grammatical categories with relative ease–for example, from a noun to a verb or adjective. I found that “hospitality management” was commonly used adjectivally before other nouns, such as “hospitality management programs,” “__services,” “__training,” “-__school,” “__group,” and “__courses.” In fact, it was even flexible enough to be commonly used without the preceding word, “management.” It’s difficult to protect names for products and services from charges of trademark infringement when they become so grammatically flexible. We don’t read much about laundry soap that is Tideable, or photos that have been Kodaxed. Okay, we may hear “xeroxed” a lot, but the owner of that mark tends to raise a big stink when that happens.
Another indication of the common, generic characteristics of a word or expression can be seen when there has been a dramatic recent increase in its frequency of use. In the four years leading up to this case, my relatively small database showed 137 public uses of “hospitality management” but only 37 uses in the six years before that. So clearly it was both grammatically flexible and had increased recent frequency, strong candidate measures for it to fit the trademark category of generic.
Even Registry’s hail-Mary claim that its descriptive mark had strong secondary meaning didn’t help them. Perhaps relying somewhat on my analysis or maybe just using good sense, the judge ruled that “hospitality management” was generic and therefore not protectable.