Confronting the Genericism Conundrum
Deven R. Desai
Georgia Institute of Technology - Scheller College of Business
Sandra L. Rierson
Thomas Jefferson School of Law
October 3, 2006
Cardozo Law Review, Vol. 28, No. 4, p. 1789, 2007
TJSL Legal Studies Research Paper No. 934620
The doctrine of genericism - under which a court may determine a previously valuable mark is or has become generic, thus losing all trademark status and value - has been under theorized since work authored by Professors Folsom and Teply in 1980. Yet in the interim, the expansion of intellectual property rights has changed the landscape of the balance between rights holders and the public. For example recent lawsuits and articles have drawn attention to a growing issue in intellectual property law, the aggressive and arguably abusive tactics of intellectual property ("IP") rights holders. Indeed in the trademark context, some maintain and there are arguments to support the idea that trademark holders bring these actions as a means of manipulating the public through direct control of the public's ability to use language. Nonetheless, if one supposes for a moment that trademark holders and their counsel are acting at some level of good faith and are rational, it may be that something else in the law itself drives this otherwise questionable behavior. This paper argues that the doctrine of genericism as it is currently applied forces the trademark holder to police her rights in this extreme manner for fear of losing her mark.
Specifically, this paper investigates the theoretical and historical evolution of the doctrine and posits that current genericism doctrine has strayed far from its roots, which are in consumer understanding in the marketplace and enhancing competition, and now concerns itself with an inappropriate property type of analysis that places great weight on non-commercial and/or non-competitive trademark use contexts (e.g., dictionary entries, newspapers, noncompetitive third-party uses, etc.). This focus leads to inefficient results, i.e., trademark holders engaging in extensive advertising, letter campaigns, and litigation to try to protect the mark and prevent it from being deemed generic.
As such this paper argues that the doctrine should be re-anchored to focus on the mark's ability to act as a source identifier for the consumer in commercial contexts. Re-focusing genericism on consumer contexts rather than non-consumer, expressive contexts will allow the analysis to embrace a more sophisticated, broad understanding of trademarks. This approach recognizes a term's ability to perform more than one function in language depending on the user of the term and the context of the term's use (i.e., commercial and non-commercial). In addition, this revised understanding of genericism would undermine trademark holders' ability to claim the need to engage in what would otherwise be frivolous and/or abusive enforcement strategies, because they could no longer hang their collective hat on the excuse that they were required to do so to avoid falling victim to genericism. In short, this retooling of the doctrine would allow trademark owners to enjoy the full benefits of the source identifying functions of their marks while at the same time creating a space in which the public may enjoy full use of the terms without fear of reprisal by mark owners.
Number of Pages in PDF File: 68
Keywords: trademark, intellectual property, expression, linguistics, competitionAccepted Paper Series
Date posted: October 3, 2006 ; Last revised: October 2, 2008
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