GENERIC TERM OR TRADEMARK?:
CONFUSING LEGAL STANDARDS AND
INADEQUATE PROTECTION
INTRODUCTION
The Trademark Act of 1946,1 popularly known as the Lanham Act,
defines a trademark as "any word, name, symbol, or device or any
combination thereof adopted and used by a manufacturer or merchant
to identify his goods and distinguish them from those manufactured
or sold by others." 2 Trademarks are afforded a legally protected
status under the Act because they benefit society by promoting competition among sellers, protect the public from deceit, and guarantee
product quality. 3 The law protects trademarks by allowing them to
be registered and retained for exclusive use by the trademark
4
holder.
1. 15 U.S.C. §§ 1051-1127 (1976).
2. Id. § 1127.
3. For the legislative history of the Lanham Act and earlier trademark statutes, see generally TRADE-MARKS-REGISTRATION AND PROTECTION, [1946] U.S. CODE CONG. & AD. NEWS
1274. The United States Supreme Court has stated that "[t]he protection of trade-marks is the
law's recognition of the psychological function of symbols . . . . If another poaches upon the
commercial magnetism of the symbol [the trademark owner] has created, the owner can obtain
legal redress." Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205
(1942). Cf. Reporter's Note, Southern v. How, 79 Eng. Rep. 1243 (K.B. 1617) (English courts
protected marks of trade goods as early as the fifteenth century).
For a discussion of the history of trademarks, see generally F. SCHECTER, THE HISTORIcAL
FOUNDATIONS OF THE LAW RELATING TO TRADEMARKS (1925) (traces trademark law from its
origins to its modem treatment). See also Brock, Merchandising Value of Trademarks, 42
TRADEMARK REP. 701 (1952); Diamond, The Historical Development of Trademarks, 65
TRADEMARK REP. 265 (1975); Leeds, Trademarks-OurAmerican Concept, 46 TRADEMARK REP.
1451, 1451-54 (1956); Paster, Trademarks-TheirEarly History, 59 TRADEMARK REP. 551 (1969).
4. The U.S. CONST. art. I, § 8, cl. 8, provides specifically for a system of copyrights and
patents but does not mention trademarks. Congress, nevertheless, purported to use this clause
as authority for enacting, in 1870 and 1876, the first federal statutes providing for the registration of trademarks. These two acts were subsequently held unconstitutional in The Trademark
Cases, 100 U.S. 82 (1879). Congress then passed the Act of 1881, and amended it in 1905,
1906, and 1920. The Lanham Act, the current trademark law, was enacted in 1946. 15 U.S.C.
9§ 1051-1127 (1976).
The Lanham Act provides that registration constitutes constructive notice of the registrant's
claim of ownership. 15 U.S.C. § 1072 (1976). Registration on the Principal Register is "prima
facie evidence of the validity of the registration, the registrant's ownership of the mark, and the
registranes exclusive right to use the mark in commerce .
A. SEIDEL, WHAT THE GENERAL PRACTITIONER SHOULD KNOW ABOUT TRADEMARKS AND COPYRIGHTS 25 (3d ed. 1976).
Moreover, registration on the Principal Register provides the right to bring suit in the federal
courts without regard to diversity or statutory amount requirements, 15 U.S.C. § 1121 (1976);
the ability to obtain an injunction enforceable by any district court of the United States, id. §
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Trademark protection, however, is not absolute, and the grant of
exclusive use can be cancelled for a number of reasons. 5 A ground
for cancellation that has stirred recent controversy is genericnessthat is, whether a trademark has become the "common descriptive
name of an article." 6 A trademark deemed generic loses its protected status because it has ceased to perform the functions that justified its protection. 7 Competitors of the holder of a generic mark,
therefore, can use the mark to describe their products. 8
Traditionally, private litigants have sought the cancellation of
trademarks on genericness grounds. The genericness issue typically
arises when a trademark infringement action defendant, 9 as a defense, seeks to have the plaintiff-holder's mark cancelled because it
has become generic. 10 Alternatively, the holder's competitors may
1116; the right to recover profits realized by violators, damages, including treble damages, and
costs of legal actions, id.; and freedom from importation of infringing labels, id. § 1124.
A mark that does not qualify for registration on the Principal Register may nonetheless be
registered on the Supplemental Register if the mark is "capable of distinguishing the applicant's
goods or services." 15 U.S.C. § 1091. Although registration on the Supplemental Register does
not provide the degree of protection afforded marks on the Principal Register, it does prevent
the registration of the same or a confusingly similar mark upon either Register by a third party.
Id. Unless otherwise indicated, registration as used in this comment refers to registration on the
Principal Register.
5. 15 U.S.C. § 1064 (1976). The six independent grounds for cancelling the registration of a
mark delineated by § 1064 are: (1) fraudulent obtainment of registration; (2) registration in
violation of 15 U.S.C. § 1052 or § 1054 (1976); (3) misrepresentation of the source of a product
by or with permission of the registrant; (4) abandonment of registration; (5) inconsistency of
continued protection with the governing statutes; and (6) genericness.
6. Id. The Lanham Act refers to a generic trademark as "the common descriptive name of
an article." Id. § 1064(c). The Act, however, does not use the term "generic" in any statutory
definitions.
7. "Underlying the absence of a legally protectable right to use a generic name is the
notion that generic marks distort consumer preferences and depress competition by indirectly
restricting the market for the products of competitors who are unable to use the generic name
to describe their products." Shipley, Generic Trademarks, the FTC and the Lanham Act: Covering the Market with Formica, 20 WM. & MARY L. REv. 1, 3 (1978) (footnote omitted).
8. When a term is held generic it "precludes federal trademark registration, prevents a
federal trademark registration from becoming incontestable, and is a ground for cancelling a
federal registration at any time." Id. at 2-3 (footnotes omitted).
9. Under the Lanham Act, the use or reproduction of registered marks without the owner's
consent may result in civil liability. 15 U.S.C. § 1114 (1976). With recordation on the Principle
Register as prima facie evidence of the trademark's ownership and validity, 15 U.S.C. § 1115
(1976), a successful infringement action plaintiff may recover both actual and punitive damages,
the defendant's profits, and costs of litigation. 15 U.S.C. § 1117 (1976).
10. See, e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) (SHREDDED
WHEAT); Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977)
(LIGHT BEER), cert. denied, 434 U.S. 1025 (1978); Donald F. Duncan, Inc. v. Royal Tops
Mfg. Co., 343 F.2d 655 (7th Cir. 1965) (YO-YO); Coca-Cola Co. v. Snow Crest Beverages, 162
F.2d 280 (1st Cir.) (COLA), cert. denied, 332 U.S. 809 (1947); Dupont Cellophane Co. v.
Waxed Prods. Co., 85 F.2d 75 (2d Cir.) (CELLOPHANE), cert. denied, 299 U.S. 601 (1936);
Nissen Trampoline Co. v. American Trampoline Co., 193 F. Supp. 745 (S.D. Iowa 1961)
(TRAMPOLINE); Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (ASPIRIN).
1979]
GENERIC TERM OR TRADEMARK?
111
initiate cancellation suits based on genericness claims. 11 By contrast,
while it has instituted cancellation proceedings against trademark holders on other grounds, 12 the federal government until recently has
not sought cancellation based on genericness. 13
In 1978 the Federal Trade Commission (FTC) brought suit against
the Formica Corporation, invoking for the first time its authority
under the Lanham Act' 4 to seek cancellation of a trademark solely on
16
genericness grounds. 15 The FTC alleged that the term FORMICA
had become the generic name for all decorative plastic laminate
materials. This action by the FTC foreshadows a vastly increased role
for government in the initiation of genericness-based cancellation actions. 17 Indeed, the prospect of a governmental role in trademark
11. 15 U.S.C. § 1064(c) (1976). See note 5 supra. Cf. Application of G.D. Searle & Co., 360
F.2d 650 (C.C.P.A. 1966) (term subject to cancellation as a generic name should not be registered). The genericness issue may also be raised in a declaratory judgment action brought under
the Declaratory Judgments Act, 28 U.S.C. §§ 2201, 2202 (Supp. 1978). See, e.g., Topp-Cola
Co. v. Coca-Cola Co., 314 F.2d 124 (2d Cir. 1963).
12. The Federal Trade Commission (FTC) has filed only five cancellation petitions under the
Lanham Act. Dixon, Trademarks, The Federal Trade Commission, and the Lanham Act, 68
TRADEMARK REP. 463, 467 (1978). Three of the cancellation petitions concerned abandonment
of the trademark by the holder. See FTC v. Service Seed Co., Cancellation Proceeding No.
7478 (filed May 2, 1960); FTC v. Danne, Cancellation Proceeding No. 7152 (filed Aug. 5, 1958);
FTC v. Elder Mfg. Co., 84 U.S.P.Q. (BNA) 429 (Comr. 1950). Two were filed to cancel fraudulently obtained trademarks. See FTC v. Bart Schwartz Int'l Textiles, Ltd., 289 F.2d 665
(C.C.P.A. 1961); FTC v. Royal Pharmacal Corp., 84 U.S.P.Q. (BNA) 429 (Comr. 1950).
13. The FTC's trademark cancellation efforts were severely limited by the decision in FTC
v. Elder Mfg. Co., 84 U.S.P.Q. (BNA) 429 (Comr. 1950), in which the Patent Office held that
the FTC could not petition for cancellation of marks that had originally been registered before
1946. Thus, the FTC was not permitted to take action against a trademark registered prior to
enactment of the Lanham Act that may have subsequently become generic. This precedent was
overruled in the denial of a motion to dismiss in FTC v. Formica Corp., 200 U.S.P.Q. (BNA)
182 (T.T.A.B. 1978), presaging an increased role for the FTC in initiating cancellation proceedings. Congress, in its recent assault on the FTC, however, expressly denied the Commission
authority to use its funds to initiate genericness-based cancellation actions through fiscal year
1982. Federal Trade Commission Improvements Act of 1980, Pub. L. No. 96-252, § 18 (May
28, 1980).
14. 15 U.S.C. § 1064 (1976). The statute permits the FTC to apply for cancellation of the
registration of any mark that has become generic. Id.
15. FTC v. Formica Corp., Cancellation No. 11,955 (filed May 31, 1978). Related actions
involved two unsuccessful motions by the defendant. Formica Corp. v. Lelkowitz, 590 F.2d 915
(C.C.P.A. 1979) (motion for writs of mandamus and prohibition denied), cert. denied, 47
U.S.L.W. 2784 (June 5, 1979); FTC v. Formica Corp., 200 U.S.P.Q. (BNA) 182 (T.T.A.B. 1978)
(motion to dismiss denied). In Formica Corp. v. Newnan Corp., 149 U.S.P.Q. (BNA) 585
(T.T.A.B. 1966) the term MICA was held nongeneric by the TTAB.
16. The Formica Corporation is the owner of Registration No. 421,496 for the trademark
FORMICA, a term applied to "laminated sheets of wood, fabric, or paper impregnated with
synthetic resin and consolidated under heat and pressure, for use on table tops, furniture and
wall paneling." This registration became effective on June 4, 1946. FTC v. Formica Corp., 200
U.S.P.Q. (BNA) 182, 185 (T.T.A.B. 1978).
17. See Dixon, supra note 12, at 469 (FTC Commissioner indicates FTC will "be on the
lookout for situations in which a trademark has become generic .... "). See also Pickett &
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litigation recently prompted Congress to prohibit through 1982 the
use of FTC funds for the initiation of genericness-based cancellation
actions. 18 Barring a substantive revision of the Lanham Act, however, this congressional action appears only to forestall such an increased federal role.
The genericness determination is the principal issue in all
genericness-based cancellation actions brought by either the government or private parties, and often is the primary issue in trademark
infringement suits. 19 In determining whether a mark is generic,
however, courts have applied inconsistent standards. Courts confronting the genericness question are faced with conflicting and confusing
precedent that allows varying degrees of protection to the trademark
holder. The trademark owner, therefore, must defend his mark without a clear understanding of the applicable judicial standards. This
comment will analyze critically these conflicting standards and propose a standard, already adopted by some courts, that offers a
trademark holder a relatively high degree of protection.
This comment first examines the definitional deficiencies of the
Lanham Act in distinguishing between a generic term and other
trademark classes and addresses the hierarchical classification scheme
of trademark protection that the courts have fashioned to fill the
statutory void. It then analyzes the legal standards elaborated by the
courts to define genericness more precisely. This examination illustrates the differences in legal standards among the various courts in
terms of both the levels of understanding deemed necessary to de-
Rishel, Suit Chips Away at Formica, Nat'l L.J., June 18, 1979, at 1, col. 6. The authors state
that the Formica suit "is emerging as a test case that could open up trademarks of other big
businesses to scrutiny .... " Id. Former U.S. Trademark Association President John Lanahan
was quoted as stating that "[t]he FTC must undoubtedly have some kind of trademark hit list of
other key brand names it could challenge if successful here.
... Id. For a general discussion
of the increase in state and federal government action against trademarks, see Ball, Government
versus Trademarks: Today-Pharmaceuticals,Realemon and Formica-Tommorrow?, 68
TRADEMARK REP. 471 (1978).
18. Federal Trade Commission Improvements Act of 1980, Pub. L. No. 96-252, § 18 (May
28, 1980). A bill has been introduced that would amend the Lanham Act to withdraw the FTC's
authority to cancel generic trademarks, but no action has been taken. See H.R. 3685, 96th
Cong., ist Sess. (1979).
19. In 1979, Alfred F. Dougherty, then Director of the FTC's Bureau of Competition,
stated that "the sole legal issue in the Formica case, as in any similar private trademark litigation, is whether the mark has become generic." Speech by A. F. Dougherty before the Boston
Bar Association, June 28, 1979. It should be noted that the possibility of trademark loss could
have significant financial implications for numerous companies forced to defend their marks. In
the Formica litigation, for example, company lawyers estimated that the suit might cost the
corporation several million dollars. Pickett & Rishel, Suit Chips Away at Formica, Nat'l L.J.,
June 18, 1979, at 18, col. 1.
1979]
GENERIC TERM OR TRADEMARK?
termine genericness and the segments of the population considered
relevant to this determination. The comment further focuses on the
adequacy of the several types of evidence used by the courts in finding the genericness. The comment concludes that courts should articulate more clearly the standards for determining genericness and
adopt a standard that provides the greatest degree of protection to
the trademark holder, as required by the Lanham Act. 20
I.
THE DEFINITIONAL "DISTINCTIONS"
AMONG TRADEMARKS
The confusion surrounding the genericness issue is attributable, in
part, to the vague statutory guidelines that determine the degree of
protection afforded a trademark. 21 Under the Lanham Act,
trademarks are classified by definition into those granted registration
and those denied registration, with the former acquiring protection. 22 This classification system is, however, definitionally imprecise; the Act simply provides for registration of2 3terms "that distinguish the goods of one merchant from another."
The courts, in order to aid in statutory interpretation, have developed a hierarchical scheme for determining eligibility for registration and, conversely, cancellation. This scheme correlates the four
categories of trademarks, as loosely defined in the Lanham Act, with
the degree of protection afforded them. These categories, in descending order of protection, are: fanciful or arbitrary, suggestive, descriptive, and generic. 2 4 Under this classification scheme, fanciful or
arbitrary, suggestive and certain descriptive words are deemed registrable and thus are protected. 25 A generic term, by contrast, is de20. See notes 78-80 & accompanying text infra.
21. See generally Diamond, Untangling the Confusion in Trademark Terminology, 65
A.B.A.J. 1523 (1979).
22. 15 U.S.C. § 1052 (1976). The registration of trademarks is predicated on the recognized
need to protect consumers against spurious and falsely marked goods, to guard the interests of
the trademark holders, and to encourage high quality goods in commerce. See the legislative
history of the Lanham Act, [1946] U.S. CODE CONG. & AD. NEws 1274, 1275.
23. 15 U.S.C. § 1052 (1976) provides that "[n]o trademark by which the goods of the
applicant may be distinguished from the goods of others shall be refused registration on the
principal register ... unless it ... [c]onsists of a mark which . . .when applied to the goods of
the applicant is merely descriptive .. . of them ...."
24. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976); AntiMonopoly, Inc. v. General Mills Fun Group, Inc., 195 U.S.P.Q. (BNA) 634 (T.T.A.B. 1979),
rev'd, 611 F.2d 296 (9th Cir. 1979).
25. The clearly protectible trademarks are the "fanciful," "arbitrary," and "suggestive" terms.
The name "fanciful" as a classifying term is usually applied to words that have no other meaning
than that attributable to their use as trademarks, such as Exxon, Xerox and Kodak; an "arbitrary" term is a common word applied in an unfamiliar way, such as Camel for cigarettes. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 n.12 (2d Cir. 1976). See also
Zivin, Understanding Generic Words, 63 TRADEMARK REP. 173 (1973).
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[Vol. 29:109
nied registration because it does not distinctively identify a product. 26 The Lanham Act's skeletal definition of what constitutes a
generic term has prompted the courts to fashion additional legal definitions to elucidate further the contours of genericness. According to
one legal standard, a term is generic "if the buyer understands the
name of the product to mean only the kind of goods sold," 2 7 rather
than the producer of the goods. Other courts have found a mark to be
generic if the principal significance of the word indicates the nature
or class of an article rather than its manufacturer. 28
Although this judicial classification system improves upon the vague
distinctions in the Lanham Act, differentiation among the four
categories remains a difficult task. 29 In the registration of a mark, for
A suggestive term requires the observer to imagine the nature of the goods. Union Carbide
v. Ever-ready Inc., 392 F. Supp. 280, 286 (N.D. Ill. 1975), rev'd, 531 F.2d 366 (7th Cir.), cert.
denied, 429 U.S. 830 (1976); General Shoe Corp. v. Rosen, 111 F.2d 95, 98 (4th Cir. 1940); see
RESTATEMENT OF TORTS § 721, comment a (1938). The trademark SUN-KIST for oranges and
grapefruits is a representative suggestive term held protectable under the trademark laws.
California Fruit Growers Exch. v. Gonska, 55 F. Supp. 499 (N.D. I11.1943). See 3 R.
CALLMANN, UNFAIR COMPETITION TRADEMARKS AND MONOPOLIES § 71.2, at 157-63 (1964)
(extensive list of suggestive words and decisions holding those words valid trademarks).
A descriptive term, conversely, "conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is." Stix Prods.,
Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 487 (S.D.N.Y. 1968). Under the
Lanham Act, a trademark that is "merely descriptive" can only be registered on the Principal
Register if it has become "distinctive of the applicant's goods in commerce." 15 U.S.C. §§
1052(e)-1052(f) (1976). Accordingly, the courts have adopted a test, termed the "secondary
meaning" doctrine, to determine whether certain descriptive words have become distinctive
through continuous use. If a term has acquired secondary meaning to the public beyond its
common definition, it can then be registered. The Sixth Circuit in G. & C. Merriam Co. v.
Saalfield, 198 F. 369, 373 (6th Cir. 1912), cert. denied, 243 U.S. 651 (1917), stated the history
and policy behind the secondary meaning doctrine:
It contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market, because
geographically or otherwise descriptive, might nevertheless have been used so long
and so exclusively by one producer with reference to his article that, in that trade
and to that branch of the purchasing public, the word or phrase had come to mean
that the article was his product; in other words, had come to be, to them, his
trademark. So it was said that the word had come to have a secondary meaning ....
See Treece & Stephenson, A Look at American Trademark Law, 29 Sw. L.J. 547, 548-53 (1975)
(discussing secondary meaning doctrine). See also 3 R. CALLMANN, supra, § 71, at 112-54 (extensive list of descriptive terms held to be valid trademarks).
26. 15 U.S.C. § 1052 (1976). The statute requires that a mark distinguish the applicant's
goods or services in order to be registered. Id. A generic term refers to an entire class of
articles and, therefore, cannot be distinctive.
27. Bayer Co. v. United Drug Co. 272 F. 505, 509 (S.D.N.Y. 1921) (emphasis added).
28. See, e.g., Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 256 (2d Cir.), cert.
denied, 371 U.S. 910 (1962).
29. As one court recently noted, "the lines of demarcation are not always bright among these
classifications." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 n.6 (2d Cir.
1976). The descriptive classification, in particular, has generated considerable confusion, be-
1979]
GENERIC TERM OR TRADEMARK?
example, a term may be placed in one category for a particular product and a different category for another, such as the generic word
"ivory" for elephant tusks and the fanciful trademark IVORY for
soap. 30 A term also may have one meaning to one group of users
and a different one to others, such as the generic term "aspirin" to
consumers and the registered trademark of the same name to trade
persons. 31 Additional definitions of genericness espoused by many
courts have not made the genericness determination easier; rather,
conflicting judicial definitions have compounded the confusion. 32
This classification problem is exacerbated in the cancellation context because a mark, though originally distinctive and registered, over
time may become generic, thereby losing all protection. 33 A for-
cause it most closely approximates the unprotected geneic mark. As one commentator noted,
the Lanham Act terminology for the two classifications, that is "merely descriptive" for registrable descriptive marks and "common descriptive" for generic terms, only exacerbates the misuse
of the terms. Diamond, supra note 21, at 1526.
The distinction between descriptive and generic terms is highly significant, because descriptive words that have acquired secondary meaning are protected, while a generic term, even
with proof of secondary meaning, can never be transformed into a subject for a trademark. Id.
at 1525. See Surgicenters v. Medical Dental Surgeries, 196 U.S.P.Q. 121 (D. Or. 1976)
("Generic marks ... cannot be protected. Secondary meaning is of no avail.") (emphasis in
original). This is so because a mark " 'must be capable of distinguishing the applicant's goods or
services' (15 U.S.C. § 1091), and that, by definition, is a test a generic term cannot meet."
Diamond, supra note 21, at 1525. The term "cellophane," for example, has been held to be the
generic name for a sheet of transparent regenerated celluloid and thus can never become a
registered trademark. See Dupont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir.
1936), cert. denied, 304 U.S. 575 (1937). Descriptive terms for the product, however, such as
"shiny" or "clear," perhaps combined with the word "sealed," could acquire a secondary meaning and become registrable. Cf. Aloe Creme Laboratories, Inc. v. Milsan, 423 F.2d 845, 849
(5th Cir.), cert. denied, 398 U.S. 928 (1970).
30. Abercrombie & Fitch Co., v. Hunting World Inc., 537 F.2d 4, 9 n.6 (2d Cir. 1976).
31. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (ASPIRIN held generic to
public and non-generic to trade).
32. See notes 64-69 & accompanying text infra.
33. See, e.g., King-Seely Thermos Co. v. Aladdin Indus. Inc., 321 F.2d 577 (2d Cir. 1963)
(formerly suggestive term THERMOS held generic); Dupont Cellophane Co. v. Waxed Prods.
Co., 85 F.2d 75 (2d Cir. 1936) (formerly suggestive term CELLOPHANE held generic), cert.
denied, 304 U.S. 575 (1937); Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. (BNA) 80
(C.C.P.A. 1950) (formerly arbitrary term ESCALATOR held generic). See Shipley, supra note
7, at 7 (even arbitrary and fanciful trademarks deemed "worthy of the greatest degree of legal
protection ... may degenerate into generic designations as their distinctiveness fades with the
lapse of time and continued public use"). See also E. VANDENBURGH, TRADEMARK LAw AND
PROCEDURE § 9.20, at 269 (1968). Vandenburgh describes the process of a mark's becoming
generic:
[w]hen the meaning of a mark that had previously served as an indication of origin
changes so that its principal significance to purchasers is that of indicating the nature or class of goods and its function as an indication of origin is subservient
thereto, it is no longer a mark but rather is a generic term.
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merly valid trademark can become generic in any of the following
ways: first, the trademark owner may use the word inappropriately in
referring to the article in advertising or product packaging; second,
the expiration of a patent may result in the trademark for the
patented product becoming generic; and third, the trademark owner
may not have policed effectively against improper use of the
34
trademark by competitors or by the general public.
If a trademark is believed to have become generic, a competitor
can request cancellation of the mark, or, as in FTC v. Formica, 35 the
government can institute a cancellation action. Regardless of who initiates the suit, an accurate determination of whether a trademark
should retain its protected status is even more critical in a cancellation proceeding than in the registration context. In a cancellation action, because the trademark owner's economic interest in the mark
has increased during the time it was held exclusively, the threat of
loss is more severe. 36 Moreover, the trademark statute was enacted
specifically to protect the trademark holder from unfair competition
and the consumer from falsely marked goods, and these interests are
jeopardized directly in cancellation suits. 37 Yet in these actions, the
courts must base the important determination of genericness on the
confusing and ill-defined semantical distinctions provided by the statute and the hierarchical classification scheme of the common law.
II.
THE LEGAL STANDARDS FOR DETERMINING
GENERICNESS
The courts, in order to make the genericness determination, have
developed legal standards that seek to define the nature of a generic
term under the Lanham Act. In making this determination, the basic
question before the court is one of fact: "What do the buyers understand by the word for whose use the parties are contending?" 3 8
Once this assessment of consumer understanding has been made,
however, the courts have specified various levels of such understanding requisite to a legal determination of genericness. Although courts
suggest that the criteria for their determinations emanate from a
single landmark decision, Bayer Co. v. United Drug Co., 39 the stan-
34. Zivin, Understanding Generic Words, 63 TRADEMARK REP. 173, 178 (1973). See Shipley,
supra note 7, at 7-8; Digges, Is Your Advertising Destroying Your Trademark?, 35 TnADEMARK
REP. 51, 55 (1945).
35. 200 U.S.P.Q. (BNA) 182 (T.T.A.B. 1978). See notes 13-15 & accompanying text supra.
36. See Shipley, supra note 7, at 22.
37. See text accompanying notes 78-80 infra.
38. Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921).
39. 272 F. 505 (S.D.N.Y. 1921).
1979]
GENERIC TERM OR TRADEMARK?
dards that they actually apply have been tailored to the facts of each
particular case. Thus, the legal standards for genericness may vary
among jurisdictions, thereby adding greater uncertainty to an issue
already obfuscated by the necessary complexity of factually assessing
consumer understanding.
A. The Criteriafor Detennining Genericness
The leading case concerning the cancellation of trademarks for
genericness, Bayer Co. v. United Drug Co., 40 was written in 1921 by
then district judge Learned Hand. Although decided over fifty years
ago, this case remains the foundation for the majority of genericness
opinions. 41
In Bayer, plaintiff Bayer Company brought a trademark infringement suit against a competitor for the allegedly unfair use of the term
ASPIRIN, plaintiff's common law trademark for a drug chemically
known as "acetyl salicylic acid." 42 The defendant responded that the
product became part of the public domain upon expiration of the
drug's patent several years earlier. The defendant asserted further
that the term ASPIRIN had become the common descriptive name
for the drug and, therefore, had also fallen into the public domain. 43
In determining whether the term had indeed entered the public
domain, Judge Hand articulated a standard for determining genericness based on levels of consumer understanding. 44 According to
Judge Hand, if the buyer understands the name of the product to
mean only the kind or "genus" of goods sold, the term is generic and
not entitled to protection. 45 If the product name, however, connotes
40. Id.
41. While the formula articulated by Judge Hand in Bayer Co. v. United Drug Co., id.,
preceded the Lanham Act, 15 U.S.C. §§ 1052-1127 (1976), by 25 years, it has retained its
validity and continues to be applied in contemporary trademark infringement cases. See, e.g.,
Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 490 (S.D.N.Y. 1968), in
which the court stated that "[t]he basic question, one of fact, under the test formulated many
years ago by Judge Learned Hand and followed since, is: 'What do the buyers understand by
the word for whose use the parties are contending?,"
42. 272 F. 505, 507 (S.D.N.Y. 1921).
43. Id.
44. Id. at 509.
45. Judge Hand stated:
The single question, as I view it, in all these cases, is merely one of fact: What do
the buyers understand by the word for whose use the parties are contending? If
they understand by it only the kind of goods sold, then, I take it, it makes no
difference whatever what efforts the plaintiff has made to get them to understand
more. He has failed, and he cannot say that, when the defendant uses the word, he
is taking away customers who wanted to deal with him, however closely disguised
he may be allowed to keep his identity.
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not only the kind of goods sold but something "more than that," such
as the product's origin from a particular seller or manufacturer, then
it may deserve protection. 46
Having established the appropriate standard, the court reviewed
the evidence. At the outset, Judge Hand stated that, because the
word ASPIRIN was "coined and means nothing by itself,"4 7 a presumption arose that the term was not generic. He found this presumption, however, to have been rebutted effectively with respect to
consumer understanding of the term because, given Bayer's marketing scheme, consumers "did not know and could not possibly know
the manufacturer of the drug which he got, or whether one or more
chemists made it in the United States." 4 8 This was not the case,
however, with tradepersons, including manufacturing chemists,
physicians and retail druggists, for whom the term ASPIRIN continued to mean a drug of Bayer's manufacture. 49 The court therefore
held that the term ASPIRIN had lost its trademark significance to the
general public but continued to indicate to those in the trade the
species of the drug produced by Bayer. 50
The standard articulated by Judge Hand establishes a relatively
heavy burden of proof for the defendant in a trademark infringement
suit to meet in order to show genericness. A term would not be held
generic under this standard unless it meant only the kind of good
46. Id. As Judge Hand phrased the issue in Bayer Co. v. United Drug Co.: "[T]he question
is whether the buyers merely understood that the word 'Aspirin' meant this kind of drug, or
whether it meant that and more than that; i.e., that it came from the same single, though, if
one please anonymous, source from which they had got it before." Id.
47. Id. "Prima facie I should say, since the word [ASPIRIN] is coined and means nothing by
itself, that the defendant must show that it means only the kind of drug to which it applies." Id.
48. Id. at 511. The evidence showed that the Bayer Company had, until 1915, eschewed
dealing directly with the ultimate consumers of its product. Rather, the company sold large
quantities of ASPIRIN in powder form to manufacturing chemists, physicians, and retail druggists, who made the powder into tablets and dispensed the tablets to the public. The chemists
manufactured and sold the tablets, bearing the name ASPIRIN and frequently that of the manufacturing chemist, to retailers, but in no case did Bayer's name appear on the packages that
reached the consuming public. In 1915, some seventeen months before its patent expired, Bayer
Company revamped its marketing policy, requiring its buyers to employ the legend "Bayer-Tablets of Aspirin" on packages of the drug sold at the retail level. Id. at 508. Judge Hand found
that the new labeling policy indicated that even the plaintiff was aware that the term ASPIRIN
had become generic and that plaintiff had failed to show that it had succeeded in educating the
public that ASPIRIN was not a generic term. Id.
49. Id. at 513. ASPIRIN was a species of the drug known generically as "acetyl salicylic acid"
to those in the trade. Id. at 514.
50. The court then fashioned a remedy based upon the retained trademark significance to
those in the trade. It allowed the Bayer Company the right to maintain exclusive use of the
term in dealing with tradesmen, but competitors were allowed to use the term in consumer
advertising and on packages of the drug destined for the consumer market. Id. at 515-16.
1979]
GENERIC TERM OR TRADEMARK?
sold. 51 Thus, if the term indicated even marginally the seller of the
good, the trademark would be afforded protection. 52 In decisions
the courts have weakened substansubsequent to Bayer, however,
3
tially this initial standard. 5
Although the subsequent cases purport to follow Judge Hand's
standard, only two decisions since Bayer have interpreted this standard to require the high level of consumer understanding that he
intended. The Second Circuit in DuPont Cellophane Co. v. Waxed
Products Co. 54 reiterated the formula first enunciated in Bayer, and
required the defendant alleging the genericness of the term CELLOPHANE to show that the name meant only the kind of good
sold. 55 In the other case, Marks v. Polaroid Corp., 56 the Massachusetts District Court required the defendant to show that the
term had lost all its trademark significance to the consuming public as
a whole. 57 In upholding the validity of the trademark POLAROID,
the Marks court stated that it would protect the trademark holder
"[w]here the possibility of some deception [of the public] remains real
and the need of competitors to satisfactorily describe their products is
51. See note 45 & accompanying text supra.
52. Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (term is generic if buyer
understands name of product to mean only kind of good sold).
53. See notes 70-74 & accompanying text infra.
54. 85 F.2d 75 (2d Cir.), (A. Hand, J., joined by L. Hand, J.) (holding CELLOPHANE
generic), cert. denied, 299 U.S. 601 (1936).
55. Id. at 81. The court stated that "[t]he real problem is what [CELLOPHANE] meant to
the buying public during the period covered by the present suit. In other words, did it simply
mean a transparent glycerinated cellulose hydrate regenerated from viscose, and nothing more,
or did it mean such an article of commerce manufactured by or originating with the complainant?" Id. at 77 (emphasis added).
56. 129 F. Supp. 243 (D. Mass. 1955), aff'd, 237 F.2d 428 (1st cir. 1956), cert. denied, 352
U.S. 1005 (1957).
57. Id. at 270. The case law generally indicates two ways to interpret the requisite level of
consumer understanding within the relevant universe. First, some courts have required the
attacking party to show that all consumers understand the term to be generic. The court in
Marks v. Polaroid Corp., for example, required the party challenging the mark's validity to
show that "to the consuming public as a whole, the term has lost all its trademark significance."
Id. Second, some courts have determined trademark significance by examining whether a "substantial majority" of the relevant population deemed the mark generic. See, e.g., E.I. DuPont
de Nemours & Co. v. Yoshida Int'l, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975); American Thermos Prod. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 25 (D. Conn. 1962), aff'd sub nom.
King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577, 579 (2d Cir. 1963).
Although the requirement of an absolute showing provides the highest degree of protection to
the trademark holder, it places a nearly impossible burden on the attacking party to rebut the
presumption of trademark significance. Such a high requirement, while consistent with the
primary purpose of the Lanham Act to protect the holder, may ignore the concomitant need to
protect the consumer's interests. See text accompanying notes 78-80 infra. On the other hand,
the substantial majority requirement seems to afford sufficient protection within whatever universe is selected and thus is compatible with the underlying purpose of the Lanham Act.
120
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satisfied by the availability of several common nouns or adjectives
suitable for that purpose .... ."58 This standard, like that in Bayer,
requires a clear showing of genericness, because the party challenging
the trademark's validity must show that it means only one kind of
good sold and retains no trademark significance.
Standards employed by other courts have deviated from the Bayer
standard's strict requirements. One of the major causes for the dilution of the Bayer standard, as evinced in many subsequent decisions,
was the language employed by the Supreme Court in Kellogg Co. v.
National Biscuit Co., 59 decided fifteen years after Bayer. The Court
in Kellogg considered whether the term "shredded wheat," which had
previously been denied registration on the primary register on the
ground that it was descriptive of the product, 6 0 could be afforded
trademark protection under the doctrine of secondary meaning. If the
term was found to have acquired a secondary meaning to the public
beyond its common definition, it would be protected because it
would no longer be merely descriptive of the product. 6 1 The Court
in Kellogg required the party alleging that the term had acquired a
secondary meaning and seeking the exclusive right to its use to "show
that the primary significance of the term in the minds of the consuming public is not the product but the producer." 62 This standard
implies that a term that designates the product and provides some
indication of the producer still can be generic if it does not primarily
indicate the producer. Thus, this standard permits a lesser level of
58. Marks v. Polaroid Corp., 129 F. Supp. at 270.
59. 305 U.S. 111 (1938).
60. The Court of Appeals for the District of Columbia affirmed the Commissioner of Patents'
refusal to register the term SHREDDED WHOLE WHEAT, holding that the words were
"descriptive" and "accurately and aptly describe an article of food ....
Natural Food Co. v,
Williams, 30 App. D.C. 348, 350 (1908), quoted in Kellogg Co. v. National Biscuit Co., 305
U.S. 111, 117 (1938).
61. Under the doctrine of secondary meaning, a term that could not originally have been
appropriated as a trademark may become, by usage, "distinctive" and be afforded protection. 15
U.S.C. § 1052(o (1976). See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S.
315, 335 (1938) (secondary meaning "establishes, entirely apart from any trade mark act, the
common law right ..
. to be free from the competitive use of these words as a trade-mark or
trade name."); Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920) (COCA-COLA "means a
single thing coming from a single source, and well known to the community ....
[lit has
acquired a secondary meaning in which perhaps the product is more emphasized than the producer but to which the producer is entitled."); The French Republic v. Saratoga Vichy Spring
Co., 191 U.S. 427, 435 (1903) ("geographical names often acquire a secondary signification indicative not only of the place of manufacture or production, but of the name of the manufacturer
or producer and the excellence of the thing manufactured or produced, which enables the
owner to assert an exclusive right to such name ....
).
62. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938) (emphasis added). But see
Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920).
1979]
GENERIC TERM OR TRADEMARK?
consumer understanding than that required by Judge Hand's formula
in Bayer. 63
The standard applied in Kellogg is significant because subsequent
decisions erroneously have adopted its language and combined it with
the Bayer standard to make the genericness determination, 6 4 despite
the fact that the two cases arose in much different contexts. Bayer
addressed the question of whether a "coined" or "fanciful" mark that
was in no way descriptive had entered the public domain by becoming generic. 65 Kellogg, on the other hand, involved a descriptive
term that previously had been refused registration, but that plaintiffs
claimed had acquired a secondary meaning protectable at common
law, thus rendering its use by others a trademark infringement. 66 In
light of more recent cases, 6 7 it seems clear that "genericness" and
"secondary meaning" represent distinct concepts. 68 Yet, because the
Supreme Court used the terms interchangeably in Kellogg, 69 other
63. See note 46 & accompanying text supra.
64. See notes 70-74 & accompanying text infra.
65. See notes 42-47 & accompanying text supra.
66. See notes 60-61 & accompanying text supra.
67. Telemed Corp. v. Tel-Med, Inc., 588 F.2d 213, 216-17 (6th Cir. 1978) ("A generic or
common descriptive term ... cannot become a trademark under any circumstances."); Leon
Finker, Inc. v. Schlussel, 469 F. Supp. 674, 678 (S.D.N.Y. 1979) ("it is established law that a
generic term . . . even if it has accquired a secondary meaning, cannot become a protected
trademark.").
68. By acquiring a secondary meaning, a previously unprotected term can acquire trademark
significance. See note 61 & accompanying text supra. In the language of the Lanham Act, a
term eligible for recordation only on the Supplemental Register, 15 U.S.C. §§ 1052(e), 1091
(1976), may become eligible for full trademark protection by registration on the Principal Register. 15 U.S.C. § 1052(f) (1976). In contrast, the genericness doctrine is applied to withdraw the
protection previously afforded fully registrable marks. 15 U.S.C. §§ 1051, 1091 (1976). See note
25 & accompanying text supra. Thus, in Kellogg Co. v. National Biscuit Co., a term registered
on the Supplemental Register, SHREDDED WHEAT, could not be afforded full protection
unless it was found to have acquired secondary meaning by primarily indicating its place of
manufacture. 305 U.S. 111, 117 n.3, 118-19 (1938). Alternatively, in Bayer Co. v. United Drug
Co., the "fanciful" term ASPIRIN was found to have become generic and, therefore, totally
devoid of trademark protection only when Judge Hand determined that the term meant only
the type of product. 272 F. 505 (S.D.N.Y. 1921). This was a much more stringent standard than
that applied in Kellogg and, therefore, was consonant with the more drastic consequences of
suddenly stripping a product name of all trademark protection. Although the mark ASPIRIN
had been cancelled by a Federal Patent Office examiner prior to the court's decision in Bayer,
the cancellation had no res judicata effect on the litigants' common law rights and was not at
issue in the case. Id. at 506. Consequently, the Bayer standard is applicable to federal as well
as state trademark actions. As a practical matter, the Bayer test for genericness is applied only
to remove the protection afforded a term that has been recorded on the Principal Register, an
action termed cancellation; the Kellogg secondary meaning test should be applied when a litigant seeks protection for a merely descriptive term recorded only on the Supplemental Register.
The greater stringency of the Bayer test reflects the severe impact upon a producer of having a
trademark cancelled and, therefore, is distinct from the Kellogg test.
69. The Court in Kellogg Co. v. National Biscuit Co., stated that SHREDDED WHEAT "is
the generic term of the article, which describes it with a fair degree of accuracy ...." 305 U.S.
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courts have been uncertain about which standard should be applied.
Indeed, several decisions since Kellogg combine its phraseology
with that of Bayer to create a third standard for determining genericness. 70 This third standard requires that, for a mark to be generic, it
not only must have "some significance to the public as an indication of
the nature or class of an article . . . [but] the principal significance of
the word must be its indication of the nature or class of an article,
' 71
rather than an indication of its origin."
The requirement of a showing of principal significance rather than
the loss of all trademark significance clearly represents a lower
threshold of proof for a claimant seeking trademark cancellation than
that required by Bayer. Thus, although the standard purports to follow the Bayer standard, it actually decreases the trademark holder's
protection, a result clearly contrary to Judge Hand's intent.
Moreover, while Judge Hand stated the standard in terms of what is
not generic, 72 this frequently cited, hybrid standard addresses what is
generic, 73 making attempts to harmonize the two even more uncer-
tain. 74
111, 116 (1938). The holding in Natural Food Co. v. Williams, 30 App. D.C. 348, 350 (1908),
upon which the Kellogg Court relied for this conclusory statement, indicates that SHREDDED
WHEAT describes the characteristics of the product, rather than the product itself. See note 60
& accompanying text supra. If the Court did, in fact, go beyond the decision in Natural Food
by summarily determining SHREDDED WHEAT to be generic, its subsequent application of
the secondary meaning doctrine may be explained by the fact that the contemporary consensus
that generic words cannot acquire a secondary meaning had not appeared at the time the case
was decided. See note 67 supra. Indeed, in Bayer, Judge Hand briefly considered the application of the secondary meaning doctrine after he had determined that ASPIRIN was generic to
the public. Bayer Co. v. United Drug Co., 272 F. 505, 512 (2d Cir. 1921).
70. See, e.g., King-Seeley Thermos Co. v. Aladdin Indus. Inc., 321 F.2d 577, 580 (2d Cir.
1963) (THERMOS held generic); Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 256
(2d Cir.) (FEATHERCOMBS held not generic), cert. denied, 371 U.S. 910 (1962); E.I. DuPont
de Nemours v. Yoshida Int'l, Inc., 393 F. Supp. 502, 523 (E.D.N.Y. 1975) (TEFLON held not
generic).
71. Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 256 (2d Cir.) (first case articulating this standard), cert. denied, 371 U.S. 910 (1962).
72. The standard in Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921), provides
that a trademark is not generic if it means anything more than simply the kind of goods. See
note 45 & accompanying text supra.
73. The standard in Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251 (2d Cir.), cert.
denied, 371 U.S. 910 (1962), holds that the term is or can become generic if its principal, but
not exclusive, significance indicates the nature or class of an article.
74. One court advocating the principal significance standard has suggested that the addition
of a caveat to its application may aid in harmonizing that standard with Judge Hand's analysis in
Bayer. See E.I. DuPont de Nemours v. Yoshida Int'l, Inc., 393 F. Supp. 502, 523 (E.D.N.Y.
1975). The court, relying on the observation that the defendant had a "heavy" burden to bear in
proving genericness, suggested adding a presumption to the principal significance standard that
resolves doubts about a term "in favor of the trademark owner, especially if he can demonstrate
having taken appropriate action to counteract or resist indiscriminate use of the mark by the
1979]
GENERIC TERM OR TRADEMARK?
Further evidence of the disparate treatment of the genericness
issue by the various courts is demonstrated by those decisions that
resolved the issue without applying any specific standard. 75 In
Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 7 6 for example, the
Seventh Circuit simply stated that the evidence showed the
trademark YO-YO "had become known and accepted by the general
public" 77 as the generic name for the popular toy. Those decisions in
which no standard is expressly articulated add even more uncertainty
to the genericness determination.
An analysis of the genericness cases demonstrates that the courts
have not developed a systematic standard to be applied in all such
actions. Furthermore, although many courts purport to follow the
higher threshold of consumer understanding required by Judge
Hand, the modified standards that are actually applied do not maintain the level of trademark protection deemed necessary in Bayer.
The primary objective of the Lanham Act is the protection of
trademark holders. 78 The legislative history of the Lanham Act
shows that the fear of monopoly, a concern of the Act's opponents,
was dismissed as irrelevant by the legislators. 79 Congress was concerned, however, with protecting the public from deceit, fostering
fair competition and securing to the business community the advantages of reputation and good will by preventing the usurpation of
their trademarks. 80
Thus, the intent underlying the trademark law and the public
policies that it embodies require a clear showing of genericness for
cancellation of a trademark's registration. The courts, therefore,
should carefully examine the Bayer analysis and apply it in a manner
consistent with Judge Hand's intent. A return to the more stringent
definition of genericness as enunciated in Bayer would not only propublic." Id. at 523. This suggestion demonstrates another possible standard for courts to follow
when considering genericness.
75. See, e.g., Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977)
(decision based largely on definitions of word "light," particularly in reference to alcohol), cert.
denied, 434 U.S. 1025 (1978); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d
Cir. 1976) (decision based on word "safari" as applied to particular items of clothing).
76. 343 F.2d 655 (7th Cir. 1965).
77. Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655, 668 (7th Cir. 1965). The
court cited a list of cases upon which it purportedly based its decision, including King-Seeley
Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963), Dupont Cellophane Co. v.
Waxed Prods. Co., 85 F.2d 75 (2d Cir.), cert. denied, 299 U.S. 601 (1936), and Bayer Co. v.
United Drug Co., 272 F. 505 (S.D.N.Y. 1921). Id. at 667. It is unclear, however, how the court
in Duncan actually applied these cases, because they have conflicting standards.
78. See [1946] U.S. CODE CONG. & AD. NEWS 1275-78.
79. Id. at 1274.
80. Id. at 1275.
THE AMERICAN UNIVERSITY LAW REVIEW
[Vol. 29:109
vide a systematic standard for genericness determinations, but also
would be consistent with the clear intent of Congress in enacting the
trademark law.
B. The Relevant Universe in the Genericness Decision
In seeking to ascertain the level of consumer understanding attained by a particular trademark, the court applies its legal standard
of genericness in an examination of a population segment, or universe, that it has deemed relevant. Because a term may not have
become generic to all population segments at the time of judicial
examination, a court may find a word generic to one segment of the
population, but hold that the same word retains its trademark validity
to another segment. 81 Indeed, in the Bayer case, the court held the
term "aspirin" generic to the general public but granted it protection
to those in the trade. 8 2 Alternatively, if a court were to examine
only the general consuming public, it could hold a trademark generic
to all persons, regardless of the views of those in the trade. 8 3 The
selection by the court of the particular societal segment to examine
can be determinative of the genericness question and the degree of
84
protection, if any, that the mark is afforded.
The precedent for analyzing different segments of the public, like
the legal standard for genericness, can be found in the Bayer decision. 85 In Bayer, Judge Hand designated the relevant universe as
"the general consuming public, composed of all sorts of buyers, from
those somewhat acquainted with pharmaceutical terms to those who
81. See, e.g., American Thermos Prod. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9 (D.
Conn. 1962), aff'd sub noma. King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577
(2d Cir. 1963) (THERMOS retained its trademark significance to those in trade and to segment
of consumers); Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
82. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
83. No court that has held a term generic has expressly stated that it would not consider the
trade, although many have examined only the consuming public and disregarded tradesmen.
See, e.g., Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965). But
cf. Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968)
(the mark's "meaning to a nonpurchasing segment of the population is not of significance;
rather, the critical question is what it means to the ultimate consumer").
84. This analysis focuses primarily on direct methods of ascertaining levels of consumer understanding in a relevant universe, such as polling or survey techniques. In those instances in
which a court uses indirect methods, such as a dictionary definition, no particular segment is
isolated in the court's examination. Rather, the court focuses primarily on the producer of the
goods. See Miller Brewing Co. v. G. Heileman Brewing Co., 427 F. Supp. 1204, 1206-07
(W.D. Wis.) (determination based largely on dictionary meaning of word "light"), rev'd, 561
F.2d 75 (7th Cir. 1977), cert. denied, 434 U.S. 1025 (1978). See notes 103-04 & accompanying
text infra.
85. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
1979]
GENERIC TERM OR TRADEMARK?
knew nothing of them." 86 Although the ultimate consumers' perceptions of the term "aspirin" was "the crux of this controversy,"87 the
court considered other classes of buyers, such as those in the
trade. 88 As a result of this dual analysis of the term's meaning, the
court was able to fashion a remedy that granted continued trademark
protection with respect to those persons in the trade who recognized
ASPIRIN as a trademark. 89 Because Judge Hand intended the legal
standard for genericness to provide a high degree of protection to the
trademark owner, 9 0 it is likely that he intended to maintain a similar
degree of protection in the analysis of different population segments.
By paralleling the legal standard analysis, the relevant universe aspect
of the genericness determination permits a decision that offers the
greatest degree of protection to the trademark holder, and thus, is
consistent with the primary objective of the Lanham Act. 91
Several decisions since Bayer have utilized a similarly segmented
analysis of the relevant universe. 92 For example, in a trademark infringement suit concerning the trademark THERMOS, the court, as
in Bayer, examined two population segments-consumers and
retailers-and found that the mark had retained its trademark significance to those in the trade and to a segment of the consumers. 93
86. Id. at 510.
87. Id.
88. Those in the trade included manufacturing chemists, physicians, and retail druggists. The
Bayer Company had educated these persons by pamphlets, advertisements in trade papers, and
the distribution of samples in an attempt to maintain the trademark significance of the term
ASPIRIN. Id. at 514. Evidently the process was successful, because the court found that the
trade perceived ASPIRIN to signify Bayer's product as opposed to a generic name for the drug.
Id.
Judge Hand, however, envisioned problems with attempting "too fine an application of such
divisions," id., and noted that "it is impossible to provide for such rare retailers as may not, and
such rare customers as may, know that 'Aspirin' is a trademark," id. He added that the court
can cut only so fine as our shears permit, and there will be ragged edges on either side." Id.
89. Id. at 514-16.
90. See notes 51-52 & accompanying text supra.
91. See notes 78-80 & accompanying text supra.
92. See, e.g., Dresser Indus., Inc. v. Heraeus Engelhard Vacuum, Inc., 267 F. Supp. 963
(W.D. Pa. 1967), aff'd, 395 F.2d 457 (3d Cir.), cert. denied, 393 U.S. 934 (1968). In holding
the term ROOTS a valid trademark for pumps, blowers, and compressors, the court in Dresser
analyzed a narrow segment of the population, rather than consumers in general, because of the
article's highly technical nature. The court examined the level of understanding of the term only
by those trade persons who had the requisite technical knowledge of the product, rather than
considering the consumer population in general. Id. at 967-68. This specialized examination
demonstrates an approach favoring the trademark holder's interests and, therefore, is consistent
with Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).
93. American Thermos Prod. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 23 (D. Conn.
1962), affd sub nom. King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir.
1963).
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Thus, rather than requiring a complete cancellation of the trademark,
the court fashioned a remedy to account for those persons who recog94
nized the term's trademark validity.
Other courts have expressly refused to consider any segment other
than the consuming public. 9 5 Some courts, for example, have stated
that they will consider only "the mind of the consuming public" 96 in
making the genericness determination. This departure from the Bayer
analysis clearly adds to the uncertainty surrounding the manner in
which courts make genericness determinations. Moreover, the decision may be particularly unfair to the trademark holder in those cases
in which a term is held generic, and the court has not examined
population segments other than the general public. Similar to the
need for a legal standard that affords protection to the holder by requiring a high degree of consumer understanding, courts should define the relevant universe broadly to account for the possibility of
different perceptions by the various population segments. 97 Given
the Act's objective of protecting the trademark holder, and the inequities that abound because of the inconsistency of past decisions,
the appropriate method of determining genericness should embody
all universes that are possibly relevant and fashion a remedy accordingly.
III.
THE EVIDENTIARY REQUIREMENTS IN DETERMINING GENERICNESS
Although the premise underlying the majority of legal standards for
genericness is consumer perception of a term, various genericness
decisions of the courts require different levels of consumer understanding to find a term generic. The application by the courts of
different standards to determine genericness results in variations in
94. The court held that the trademark THERMOS was valid but would not be infringed by
the defendant's generic use of the word "thermos" in lower case type. Accordingly, the court
allowed the defendant to use the term "thermos" but limited its use by requiring the company's
name, Aladdin, to precede any generic use of the term. In recognition of the term's retained
trademark significance, the court allowed the plaintiff to maintain exclusive use of all its existing
forms of the word THERMOS, such as in all capitals of the same size and in a form of stylized
capitals. Id. at 27.
95. See, e.g., Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479
(S.D.N.Y. 1968). In upholding the validity of the trademark CONTACT for self-adhesive decorative plastics, the court in Stix examined only the purchasing public. According to the court,
the determination of whether a word is generic to a nonpurchasing segment of the population,
such as those in the trade, is not important. Rather, the "critical question is what it means to
the ultimate consumer." Id. at 488.
96. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938).
97. See note 57 & accompanying text supra.
1979]
GENERIC TERM OR TRADEMARK?
the types of evidence utilized to ascertain the level of consumer understanding. One author has divided these evidentiary types into two
categories, indirect and direct methods of determination. 98 Examination of the term's usage in publications, advertisements, and dictionaries are examples of indirect methods. 99 The direct methods,
by contrast, measure consumer perception by either in-court testimony of consumers or opinion surveys. 100 Direct methods of determination are better than indirect when used in conjunction with
the Bayer standard. Greater use of direct methods is necessary in
evaluating evidence in genericness cases.
A. Indirect Deterninations
The indirect methods of determining genericness are based solely
on logical assumptions of the consumers' response to a trademark.
The major fault with the indirect method is its failure to provide a
firsthand measurement of consumer understanding, because of its in98. Bemacchi, Trademark Meaning and Non-Partisan Survey Research:A Marriageof Necessity, 30 AD. L. REv. 477 (1978). Bemacchi examines both direct and indirect measurement of
what he terms "buyer-receiver interpretations or decoding," and advocates the use of the direct
methods. Id. at 449. Although both methods seek to determine the consumer response to the
trademark, the direct methods, particularly consumer polls, are preferred, because they actually
gauge the level of consumer understanding in the relevant universe. See 3 R. CALLMANN, supra
note 25, § 82.3(c), at 855. The indirect methods, on the other hand, measure the anticipated
consumer response based upon the trademark's actual use. Bernacchi's preference for the direct
methods is based upon their use in evaluating the consumer's interpretations of the mark, as
opposed to the indirect methods only indicating the court's perception of the trademark's impact.
Bemacchi uses the formula established by Judge Hand in Bayer Co. v. United Drug Co., 272
F. 505 (S.D.N.Y. 1921), and develops his analysis according to Judge Hand's standard for consumer perceptions. The author, however, mislabels the Bayer case a secondary meaning decision. The issue in Bayer was actually whether the term had become generic. This confusion of
terms demonstrates further the confusion surrounding the generieness issue.
99. See Bernacchi, supra note 98, at 449-54. Bernacchi describes various indirect methods
and criticizes each in the context of establishing secondary meaning. Two of the indirect
techniques, face validity and advertising criteria, are important to genericness determinatiions.
Under the face validity method, the court creates a presumption or grants judicial notice of
genericness, or lack thereof, based upon the trademark's marketplace usage. See, e.g., CocaCola Co. v. Pace, 283 F. Supp. 291 (W.D. Ky. 1968) (court took judicial notice that COKE
referred to specific product and term had not become generic). According to Bernacchi, this
method has a great potential for abuse, because it vests "'complete discretionary power in the
hands of the judiciary." Bernacchi, supra note 98, at 449.
When assessing advertising as a method of determining genericness, the court examines the
amount, manner, and duration of advertising expenditures. These factors are "given strong presumptive weight." Bernacchi argues, however, that the assumptions that underlie these criteria
"are too unrealistic to permit any serious acceptance of this approach." Bernacchi, supra note
98, at 450-51. Evaluating a term's dictionary definition is another frequently used indirect
method. See notes 102-09 & accompanying text infra.
100. See notes 112-25 & accompanying text infra.
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herent margin of error. ILo Examining a term's dictionary definition
and its use in publications are common indirect methods for determining genericness. 102 In a recent Seventh Circuit decision, for
example, the court examined the word "light" as an adjective in conjunction with the word "beer."' 10 3 The court found the term generic
by relying primarily on the word's dictionary definition and its
generic use in other publications. 104 Other courts have examined
such factors as advertising, sales volume, and duration and consistency of the term's use' 0 5 to ascertain consumer understanding.
Although indirect methods provide some useful measure of
genericness, such methods have numerous deficiencies that render
them unacceptable as the sole or even primary means of proof. Indirect methods of determination permit too great a degree of judicial
discretion in weighing the evidence' 0 6 because courts employing only
indirect methods fail to verify their findings by examining the relevant universe. In practice, indirect methods provide little more than a
judicial estimate of the level of consumer understanding concerning a
particular trademark. 107 The method's inability to substantiate em101. See note 98 & accompanying text supra. Bernacchi states that the indirect methods are
"at best only marginal indices or predictors." Bernacchi, supra note 98, at 45.3.
102. See Faberge, Inc. v. Saxony Prods. Inc., 605 F.2d 426 (9th Cir. 1979) (held trial court
properly considered advertising and sale of product as evidence in secondary meaning case);
S.S. Kresge Co. v. United Factory Outlet, Inc., 598 F.2d 694 (1st Cir. 1979) (court relied on
dictionary definition of term "mart" as evidence of generieness); Dresser Indus., Inc. v.
Heraeus Engelhard Vacuum, Inc., 267 F. Supp. 963 (W.D. Pa. 1967) (court examined use of
term ROOTS in trade publications to establish genericness), aff'd, 395 F.2d 457 (3d Cir.), cert.
denied, 393 U.S. 934 (1968).
103. Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977), cert.
denied, 434 U.S. 1025 (1978).
104. Id. at 80. The court stated that its decision was based in part on "generally accepted
English usage" of the word "light." In addition to dictionary evidence, the court took judicial
notice of the definitions and usage of the adjective in "reference works on chemical technology,
industry publications, and magazines and newspapers generally." Id. at 81. See also American
Thermos Prods. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 20 (D. Conn. 1962) (court
examined word THERMOS and noted that "the great majority of dictionaries show the word
'thermos' both as a synonym for vacuum insulated or as a noun standing for a product so described, and also state that it is a trade-mark"), aff'd sub nom., King-Seeley Thermos Co. v.
Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963).
105. See, e.g., Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965)
(court found term YO-YO generic by examifing its historical usage, dictionary usage, witness
testimony, and advertising). See note 102 & accompanying text supra.
106. See Bernacchi, supra note 98, at 440, 453.
107. Indirect methods fail to comport with the requirement of Bayer Co. v. United Drug
Co., 272 F. 505 (S.D.N.Y. 1921), that the court assess the level of consumer understanding that
a trademark possesses within the relevant universe. In order to achieve this objective, the court
must measure the message received by consumers. The indirect methods, however, only assess
the message a trademark holder transmits. See note 98 supra. Because the indirect methods
cannot accurately determine the extent to which a trademark affects people constituting the
1979]
GENERIC TERM OR TRADEMARK.
pirically the level of consumer understanding leaves a court's findings
without any substantial indicia of reliability. As a result, the court
must apply its legal standard of genericness to an insufficient factual
basis.
The indirect methods also are defective because they do not
adequately define and segment the relevant universe. The focus of
the indirect method is on the producer rather than the consumer. If
the court examines only a term's dictionary definition, for example, it
fails to evaluate the term's significance to members of the relevant
universe. Such an examination ignores the possibility of different definitions within separate market segments. 108 The meaning of a term
also frequently shifts over time and through usage, yet indirect
analysis does not account for such changes. 109 Moreover, the special
meaning associated with a term that a trademark holder creates
through its use cannot be measured by its dictionary definition. Similarly, basing a determination of genericness on a term's appearance in
publications fails to gauge the impact of the term on consumers. This
method evaluates only the message the trademark holder seeks to
transmit rather' than the extent to which the message is received and
understood. Thus, the application of the indirect methods threatens
the trademark holder with the loss of the mark without the opportunity for the court to assess accurately the level of consumer understanding the mark has achieved.
The Bayer standard requires a more precise calculation of consumer understanding within the relevant universe than the indirect
methods provide. 110 Although the court in Bayer examined only indirect methods of proof, it did so because the direct methods, such as
survey research, were not admissible into evidence in 1921. 111 The
relevant universe, the court is left with little more than an estimate of the actual level of
consumer understanding that a trademark possesses.
108. Dictionaries define words according to use by writers deemed authoritative by the dictionary editors. Although this method may be suitable for determining word meaning in the
context of general usage, it is inadequate for assessing the marketplace meaning of a trademark.
Surveys should be conducted in order to record term meanings more accurately. See Lunsford,
Trademarks and Semantics: The Use and Misuse of Trademarks in Dictionariesand Trade Journals, 62 TRADEMARK REP. 520 (1972).
109. See, e.g., S.S. Kresge Co. v. United Factory Outlet, Inc., 598 F.2d 694, 696 (1st Cir.
1979) (court recognized that changes may occur in meaning of term over time and through
usage).
110. See notes 45-49 & accompanying text supra.
111. In the earlier cases in which survey evidence was presented, the court either rejected
the evidence as hearsay or failed to give it any weight in deciding the questions involved. See,
e.g., Elgin Nat'l Watch Co. v. Elgin Clock Co., 26 F.2d 376 (D. Del. 1928) (survey evidence
rejected as hearsay). This attitude, however, has changed substantially in recent years, and
courts now hold that the hearsay objection is unfounded when well-designed tests are pre-
130
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necessity for an accurate assessment of a term's trademark significance
mandates the use of survey research methodology to provide the most
accurate and objective analysis of the term's impact upon the consumer.
B. Direct Deterninations
Many of the inherent deficiencies of the indirect methods can be
overcome by direct testing of consumers' perceptions. Direct testing
attempts to assess consumer understanding of a trademark through
either in-court examination of consumers 1 12 or survey research designed to measure consumer responsiveness to a trademark. 113 The
direct method of proof has several advantages over the indirect
means.
The two kinds of direct methods applied in trademark cases, courtroom testimony by consumers and nonpartisan probability surveys,
measure consumer understanding differently. 114 While witness testimony may be superior to the indirect methods, in that it indicates
to some extent the level of consumer understanding, this technique is
often disregarded by the courts. The technique is considered inadequate because parties will only solicit self-serving witnesses who
may not accurately reflect the level of consumer understanding. 115
Furthermore, witnesses presented by the parties may not be truly
sented. See, e.g., United States v. 88 Cases, More or Less, Containing Bireley's Orange Beverage, 187 F.2d 967 (3d Cir. 1951) (hearsay objection unfounded). Although surveys now are not
excludable per se under the hearsay rule, each must "satisfy the requirements of necessity and
trustworthiness." Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 490
n.39 (S.D.N.Y. 1968), citing, inter alia, Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp.
670, 680-86 (S.D.N.Y. 1963); Wembley, Inc. v. Diplomat Tie Co., 216 F. Supp. 565, 571-72
(D. Md. 1963); American Luggage Works, Inc. v. United States Trunk Co., 158 F. Supp. 50, 53
(D. Mass. 1957). Technical deficiencies in surveys should be applied toward the weight accorded the survey, not its admissibility. E.I. DuPont de Nemours & Co. v. Yoshida Int'l Inc.,
393 F. Supp. 502, 518 (E.D.N.Y. 1975); 3 R. CALLMANN, supra note 25, § 82.3(c), at 855.
112. For a discussion of how consumer witnesses are used in trademark cases, see Lunsford,
The Mechanics of Proof of Secondary Meaning, 60 TRADEMARK REP. 263, 272 (1970) (rejecting
use of witness testimony as biased and unrepresentative).
113. See note 117 infra.
114. A third indirect method is nonprobability polling. Under this method persons present at
a particular location are questioned during a specific time period. An example of this method is
a survey conducted at a shopping mall. This technique is labeled nonprobability because only
those individuals who appear at the particular location in the mall will be surveyed. The results
of these polls are not representative of the relevant universe and generally are not deemed
persuasive by the courts. See, e.g., Jockey Int'l, Inc. v. Burkard, 185 U.S.P.Q. (BNA) 201 (S.D.
Cal. 1975); See generally BABBIE, SURVEY RESEARCH METHODS 108 (1973) (this method justiffied only to determine characteristics of people visiting particular location).
115. See Lunsford, supra note 112, at 272. In reference to consumer witnesses, Lunsford
states that "[iln no case has any defendant ever offered any evidence other than its own selfserving declarations or those of its employees." Id.
1979]
GENERIC TERM OR TRADEMARK?
representative of the relevant universe. 116 Thus, while witness testimony is simple and relatively inexpensive, the evidence produced is
frequently of minimal value.
The other direct method employs survey research to establish the
level of consumer understanding in the relevant universe. 1 17 Generally, parties contract professional research organizations to conduct
nonpartisan probability surveys. These surveys involve questioning a
small percentage of the relevant universe to establish the level of
consumer understanding. 118 Through the use of statistical procedures, the persons comprising the sample are randomly selected so
that their answers are representative of the entire relevant universe. 119
Survey evidence has a unique advantage over all other types of
evidence in that only this method, when properly employed, can
provide an accurate measurement of the level of consumer understanding the term enjoys. 120 Survey evidence is presented to the
court in the form of numerical percentages representing responses to
specific questions. When provided with this statistical information,
the court is able to apply its genericness standard directly rather than
having to speculate about the level of consumer understanding. For
example, in E.I. DuPont de Neinours v. Yoshida Int'l, Inc. 121 plaintiff
DuPont was able to establish through its survey that 68% of the relevant universe identified its product TEFLON as a brand name
while only 31% recognized it as generic. 122 The court, in applying
the primary significance standard to this evidence, found that the
term had not become generic. 123
116. Id. at 271. A third weakness of witness testimony is that it frequently constitutes inadmissible opinion testimony. See, e.g., Quaker Oats Co. v. St. Joe Processing Co., Inc., 232
F.2d 653 (C.C.P.A. 1956) (witness testimony in trademark case treated as opinion testimony).
See also 3 R. CALLMANN, supra note 25, § 83.3(c), at 851 n.59.
117. For a discussion of surveys in trademark cases, see generally Kunin, The Structure and
Uses of Survey Evidence in Trademark Cases, 67 TRADEMARK REP. 97 (1977); Sorenson, The
Admissibility and Use of Opinion Research Evidence, 28 N.Y.U.L. REV. 1213 (1953);
Zeisel, The Uniqueness of Survey Evidence, 45 CORNELL L.Q. 322 (1960).
118. Kunin, supra note 117, at 101-06.
119. The admissibility and weight given a survey is subject to two principal factors: whether
the survey is necessary to establish accurately consumer perception, and whether the survey
results are reliable. The offeror has the burden of proving that a representative sample was
taken from the relevant universe and that the questions were not leading or biased. Testimony
is frequently required from those who conducted the survey to establish its reliability. See
Dictaphone Corp. v. Dictamatic Corp., 199 U.S.P.Q. (BNA) 437 (D. Ore. 1978) (survey evidence without proof of reliability entitled to little weight).
120. Bemacchi, supra note 98, at 456 n.30. Bernacchi noted, however, that surveys are often
expensive and may be beyond the resources of some litigants.
121. 393 F. Supp. 502 (E.D.N.Y. 1975).
122. Id. at 526.
123. Id.
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Survey research evidence has another distinct advantage over other
methods of acquiring evidence in that researchers can segment the
general population by polling only within the universe deemed relevant.1 24 In Yoshida, the parties submitted various surveys that included polls measuring consumer understanding of all persons over
age eighteen and of adult women only. The court then established
the relevant universe as adult women and ascertained the level of
understanding without having its findings affected by the trademark's
impact outside the relevant universe. The surveys used in Yoshida
exemplify how survey research can sample a relevant universe effectively to assess consumer understanding of a trademark challenged as
being generic. 125
Properly constructed surveys have at least two distinct advantages
over witness testimony and the indirect methods. First, surveys can
segment the relevant universe from the general population, and second, surveys can accurately ascertain the level of consumer understanding in this universe. Precise measurement of the mark's significance is essential to protect a trademark holder from losing the mark
because of an inaccurate assessment of the mark's sigificance. Furthermore, in order to apply the Bayer standard properly the court must
fully comprehend the level of consumer understanding before it can
be certain that a mark indeed has become generic.
IV.
CONCLUSION
Relevant case law demonstrates that an accurate determination of
genericness is hindered by the lack of clear standards for the courts.
124. The parties in E.I. DuPont de Nemours v. Yoshida Int'l, Inc. disagreed on whether the
relevant universe should be composed solely of experts or of ordinary purchasers. 393 F. Supp.
502 (E.D.N.Y. 1975). The court favored the defendant's survey evidence that polled the ordinary purchasers. Id. By accepting the defendant's survey, the court in effect accepted ordinary
purchasers as the relevant universe.
Surveys of different population segments aid courts in relevant universe determinations because such surveys allow courts to assess the mark's impact on many groups of purchasers. In
many instances, however, waiting for the parties to poll different groups and then determining
the relevant universe may be both prohibitively expensive and wasteful of the parties' resources.
125. As survey techniques become increasingly important in trademark cases, efforts should
be made to standardize survey techniques prior to trial in order to avoid wasteful expenditures
for obtaining inadmissible evidence. One method would require the parties to work closely with
the court in drafting the survey questionnaire. By having the court certify the survey prior to its
implementation, the parties would be assured that the evidence would be accepted, providing
the survey is properly executed. Having the court certify the relevant universe in cases in
which it is not disputed would be another improvement. The parties would then be limited to
researching only this group. Although both of these methods require the court to become involved earlier in the case, the advantages of efficiency and lower costs outweigh any increased
burden placed upon the courts.
1979]
GENERIC TERM OR TRADEMARK?
Although the decisions are rife with confusing terminology and unclear legal guidelines for deciding the issue of genericness, the courts
do have a choice between the various standards, and the most equitable choice for the courts is a standard that reaches the high level of
protection that was defined by the court in Bayer Co. v. United Drug
Co. 126 The greater degree of protection of trademark holders required by this standard would ensure a more accurate and fair determination of the genericness issue. It also would be consistent with
the primary objective of the Lanham Act, to protect the valuable
economic interests of the trademark holder. Moreover, courts should
consider all of the relevant population segments in measuring consumer understanding of a term. By considering different population
segments, courts could avoid the inequity of holding a term generic
when the term in fact had retained its trademark significance in some
markets. Finally, the courts should use direct measurements of consumer understanding, because only direct survey research methods
provide the accurate measurements that satisfy the need for a higher
level of protection.
CAROL A. MELTON
126. 272 F. 505 (S.D.N.Y. 1921).