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Litigating a Trademark Case Based on a Genericness Claim?

Genericness Claims

Use the Teflon Format

Does your case involve an alleged generic trademark? A trademark is generic when it is used to identify a category as a whole rather than identify the source for a specific product or service. Generic marks therefore, fail to merit trademark protection. Even marks that have trademark protection may lose it if, through extensive use by other brands within the category, they become associated with a category rather than a specific brand.

A genericness survey typically seeks to assess whether relevant consumers consider a mark to be a common name or design, or a brand name or design. If consumers believe the mark is a common name, it provides strong evidence that the mark is generic. Similarly, if consumers believe the mark is associated with a single brand, the evidence is strong that the mark is not generic.

There are two main types of genericness surveys: a Teflon survey and a Thermos survey. The Thermos survey has its merits, and it might be appropriate in some cases. However, the Teflon survey is more commonly used in genericness cases. Here are the three essential elements of conducting a Teflon genericness survey.

Genericness Teflon Survey Step 1: Provide Definitions and Examples

After screening for qualified respondents, the survey should explain to respondents what is meant by the terms “common or generic name” and “brand name.”

Survey responders are not marketing or legal professionals so they probably don’t know the definitions of these terms – at least not in the way that we intend them in genericness surveys. Therefore, the survey starts by providing clear definitions of the terms “common or generic name” and “brand name.”

The start of the survey also provides examples of each, most likely related to the product or service category of interest. For instance, if the case involves a term used in the computer technology category, you might provide the name “iPhone” as an example of a brand name, and “smart phone” as an example of a common or generic term. Two examples of each term seem to be sufficient to educate respondents about the meaning of each term.

Genericness Teflon Survey Step 2: Conduct a Test

After defining the terms and providing examples, the survey verifies that respondents understand the terms “common or generic name” and “brand name.” A first measure is to directly ask respondents if they believe they understand the difference between the two terms. Terminate respondents who reply that they do not understand the difference or are not sure.

Next, the survey tests that respondents who claim to understand the difference really do know it. This can be measured by displaying either a common or generic name (e.g., “tablet”) or a brand name (e.g., “iPad”), and asking respondents to classify the name appropriately. Respondents who select the wrong answer or reply that they don’t know would be terminated.

Finally, the survey displays an example of the other type of name, and ask respondents to classify it. Again, respondents who are wrong or unsure would be terminated. Respondents would only be allowed to proceed to the main genericness survey if they claim to understand the difference between a “common or generic name” and a “brand name,” and if they correctly classify two terms as either a common or generic name or as a brand name.

Genericness Teflon Survey Step 3: Conduct the Survey

Finally, the survey measures the genericness of the name at issue. Just like in the mini test, the survey would display the name, and ask respondents to classify it as either a common or generic name, or as a brand name. (The survey would usually provide a “don’t know” option, as well.)

Additionally, the survey would display several other names relevant to the category, or closely related to it, and ask respondents to classify each term. Genericness surveys often test six to eight additional terms, and display and measure each individually. These terms include a mix of common or generic names and brand names.

In addition to terms from the same category, the survey might also test terms from related categories. These additional terms serve as controls and provide comparison measures for the results of the genericness survey.

Learn more about Harper Litigation Consulting and Research and expert witness Rhonda Harper.

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