Friday, June 08, 2012

Shouldn't we give up on the "brand as adjective" rule?

STK LLC v. Backrack, Inc., Cancellation No. 92049332  (TTAB May 21, 2012)

While I fully endorse Eric Goldman’s comments on the correct result here that TM owners aren’t required to threaten other people for mere keyword buys, I also think this case is interesting as a matter of meaning-making.  (For a full discussion, see the TTABlog post.)  The most common generic name used in the opinion for the product at issue is “headache racks,” because by protecting the back window of a pickup truck from having things come crashing through it they supposedly prevent some serious headaches.  By contrast, “backrack” apparently isn’t generic for a rack on the back of a truck.  So the “natural” generic name of a product can be allusive and playful—something worth remembering when we talk about the Abercrombie spectrum.

On the other hand, other parts of the decision are not quite as sensitive to the realities of communication: “In 2007, Armor Deck learned that a trademark should be used as an adjective to describe a product, not as a noun.  Thus, Armor Deck’s improper use of the BACKRACK trademark [as a noun] may stem from its unfamiliarity with proper trademark usage, rather than indicating the genericness of the term BACKRACK.” 

Sigh. A few pages later:

Customers looking for a BACKRACK brand product will undoubtedly use the term “Backrack” as a noun:

The fact that buyers or users often call for or order a product by a term does not necessarily prove that a term is a “generic name.”  The person who orders for lunch a “BIG MAC and a COKE” undoubtedly has brand knowledge and brand loyalty.  The generic names “hamburger” and “cola” are understood by all precisely because BIG MAC and COKE are such strong trademarks identifying source.  Since everyone knows the generic names, they are dropped in ordinary usage.  

J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 12:27 (4th ed.).

So why can’t TM owners comport with this reality?  Here’s a Hanna Andersson catalog touting the availability of “hannas,” the store’s dresses: can anyone seriously think the mark is at risk here?

Nouning adjectives or verbing them, in today’s environment, is not very probative of anything absent other information about usage—which there was here; apparently there was a split between customers who sought a thing they called a backrack, sometimes rejecting the Backrack brand as not what they wanted, and customers who sought a thing they called a backrack where they wanted or at least accepted the leading brand, Backrack.

1 comment:

Unknown said...

An interesting critique of the INTA take on this issue: