Re: Trademarks: adjective and noun usage

Subject: Re: Trademarks: adjective and noun usage
From: Chris Kowalchuk <chris -at- bdk -dot- net>
To: "Bell, John" <JBell -at- paragren -dot- com>, Techwr-l <TECHWR-L -at- lists -dot- raycomm -dot- com>
Date: Tue, 31 Aug 1999 12:54:45 -0400

A friend of mine is a lawyer who deals with this sort of thing
frequently. What I recall from conversations with him is that you can do
whatever you want with your trademark--it's what you let other people do
with it that constitutes the potential problem. Xerox probably does not
want Canon saying that it makes a good xerox, just as Kleenex does not
want other people saying they make kleenexes. Unfortunately, I think
that one of the main ways to demonstrate that you do not want your
trademarked brand name becoming a common noun is not to use it as one
yourself. The other main way is to sue anyone else who tries to use it,
but that is expensive. On the one hand, you might think it good
marketing if your product is so ubiquitous, or standard-setting that
it's name comes into the language as a common noun. Unfortunately, once
that happens, you can no longer control the use of the name. Once
everyone can make a kleenex, who the heck is Kleenex? They've lost their
differentiation.

For the purposes of documentation, I agree that it is a pain to use a
trademarked name only as an adjective, and it is probably unnecessary
(your lawyer might think otherwise). When I can, I establish the full
name of the product, as applied to a common noun, then use the product
name thereafter as an obvious abbreviation, where it is really still
doing the work of an adjective, but the noun is implicit only. For
example:

"The AT750 flange widget is the most useful widget of its kind. Not only
is your AT750 good for all class 1 flanges, it meets all class 2 and
class 3 flange requirements as well."

On the other hand, if you used the term "AT750" to refer to every and
any flange widget, and never used the common term "flange widget" at
all, then you'd be making a pretty good case against your own trademark
rights. I guess it's a question of just how popular your trademarked
name is, and how important the brand recognition is to your company or
industry. Obviously the makers of the AT750 don't have as much to worry
about as Xerox or Kleenex.

This approach has alway been sufficient to keep me and the types of
company I work for out of trouble. However, when I work for banks or
insurance companies etc., they usually have legal departments who
determine all this kind of thing, and I just follow their rules. If your
company doesn't pay for this kind of help, then it probably isn't too
worried about the issue. Ultimately, it is the sort of decision you
might want to make with legal advice, but of course any lawyer
interested in protecting his butt is going to tell you to take the most
cautious approach.

Yours,
Chris Kowalchuk





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