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I once defended a product liability case where the client was adamant that the product always be called a “personal watercraft.” It most definitely was not, he insisted, a Jet-Ski. The issue was the use of a trademark to refer to a similar product.
Back in law school, you may have learned trademark holders must vigilantly monitor references to their brand to avoid the term becoming a generic. That’s what happened to “aspirin,” “escalator” and “videotape,” which can now be sold under any brand name in the U.S. A company’s investment in brand recognition can be wiped out if the brand can legally be used to refer to any similar product. No surprise, companies don’t like that.
Xerox Corporation is famous for sending cease-and-desist letters when someone’s reference to “xeroxing” instead of “photocopying” is in the public eye. Passing off one’s product as a branded one can lead to expensive legal liability. Xerox regularly runs ads explaining that while you can copy on a Xerox photocopier, you cannot “xerox.” Yet, several dictionaries define the word as a generic term meaning to print or reproduce by xerography. It can be confusing.
When a brand becomes a commonly used verb, the trademark owner risks a court declaring the trademark has been genericized; it is no longer protected intellectual property. On May 16, 2017, the Ninth Circuit Court of Appeals ruled that verbification of the word “google” did not automatically constitute generic use. Google, Inc.’s successful marketing was not genericide.
While intellectual property attorneys are surely hip to this issue, the rest of us may have become a bit careless. Pay attention to your use of trademarked brand names in legal writing, particularly in court documents subject to public examination. Don’t use a trademarked name to refer to any other company’s product or to the general class of that type of product.
IP lawyers will advise that when you refer to a trademarked item, the best practice is to include the R in a circle mark (®), preferably as superscript, to show the term is trademarked. Kleenex is insistent that every reference to its product include the registration mark. But your organization may have a style guide that shuns the symbol within text. The Associated Press does not use the symbol in its news copy; their rule is simply to capitalize a brand name, and so should you. You haven’t broken any law just by omitting the symbol.
It’s not always easy to learn if a term is trademarked. A search for “Is [fill in the blank] trademarked?” may be your quickest path. Surprisingly, a simple search for the product name may not be definitive.
Let’s say you are drafting your tort complaint, and you are not sure if Botox is a trademarked brand or a generic term for botulinum toxin. A search result shows that the official website includes the registered trademark symbol, though other websites in the search results queue do not. On the other hand, Rollerblade is not so consistent. You have to click through to their website to find the registration symbol. The website for Fitbit exercise trackers doesn’t show the registration symbol at all. The tab in my browser shows a registration mark for Botox, but not for Rollerblade or Fitbit.
You can check the U.S. Patent and Trademark Office Trademark Electronic Search System. Because many companies may have similar names, the answer to your question may not be easily discernible. Unfortunately, there is no single, easily accessible, definitive directory.
For now, not every hot tub is a Jacuzzi, not every disc is a Frisbee, and not every plastic bandage is a Band-Aid. Regardless of the future of those brands, you can best protect your client and yourself by respecting those and other trademarks in your legal writing.
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