Rusty Close and Austin Padgett discuss what happens when a trademark becomes so common and descriptive that it reaches the point of being generic.
In this episode, Rusty Close and Austin Padgett discuss what happens when a trademark becomes so common and descriptive that it reaches the point of being generic. They explore how trademark owners can protect their trademarks from this heinous crime by actively enforcing their rights and educating the public on the proper use of their trademarks.
No Infringement Intended, hosted by Rusty Close and Austin Padgett, is your go-to podcast for exploring the fascinating intersection of intellectual property and pop culture.
No Infringement Intended Podcast — Can My Trademark Be a Victim of Genericide?
Hosts: Rusty Close and Austin Padgett
Recorded: December 5, 2024
Aired: February 11, 2025
Austin Padgett:
Hello out there. Welcome to this podcast called No Infringement Intended. It's an intellectual property podcast of the law firm Troutman Pepper Locke, at least until another intellectual property podcast is put forth by our colleagues. The challenge still remains as far as I know out there. We want to thank you at the outset for giving us the numbers. They're outstanding. The firm is just really rolling out the red carpet for us. Leadership is so thrilled with the way this podcast is going. In fact, they're talking about letting Rusty here, who is my colleague that I should mention, Rusty Close. I'm Austin Padgett. But they're going to let Rusty be chairman of the firm for a day. It sounds like sometime here in the mid-year. I think they're going to going to choose just some inconsequential day or so they think.
Again, thank you for that. Keep listening. Smash that subscribe, smash that like, whatever it takes on the platform to give us the five-star reviews. We love them. We appreciate them. Let's get to this episode. Let me ask you this, Rusty, from the outset. Have you ever heard of the Mandela Effect?
Rusty Close:
I am vaguely familiar with the Mandela Effect. I usually associate it with the childhood book series, the Berenstain Bears. I think there's an issue of whether it's Berenstain, A-I-N, or Berenstein, E-I-N, Bears.
Austin Padgett:
Right, and nobody knows.
Rusty Close:
Nobody knows.
Austin Padgett:
Right. That's right. Yes. Yes. You've isolated the issue is that it's this phenomenon where a big group of people typically remember something that actually didn't happen. Or they misremember a fact about something. It's named after this conception that lots of people had that Nelson Mandela had died in prison when he was actually released and lived quite a long time afterwards. There are all these popular concepts like in the Star Wars films where Darth Vader says, "Luke, I am your father." When it's, "No, I am your father," in the film, spoiler alert for anyone who hasn't seen those quite yet.
There's another where the Monopoly man, people believe he has a monocle for some reason. But Rich Uncle Pennybags has never had a monocle as far as I can tell. There's also a lot of songs where people have had this type of misconception, and it's just popularly held. For example, in Queens’ We Are the Champions, people think that it ends with the words of the world. But, actually, if you listen to the studio version, it does not include those words at the end.
Rusty Close:
That sounds to me like one where they probably – people saying that at live shows, and it just kind of gets embedded in your mind anytime you hear it. You kind of keep singing.
Austin Padgett:
Yes, yes. Musically, you're not ending where you think you should.
Rusty Close:
Right, right. It seems that’d be an odd cutoff.
Austin Padgett:
Right, yes. You've got to complete the phrase, and it's been repeated over and over and over again throughout the song. If Brian May and the boys are taking notes, just a thought when they do the next remaster. Another popular one is, It's A Beautiful Day in the Neighborhood when Mr. Rogers actually sings it’s a beautiful day in this neighborhood. I think there's even a film where they use the neighborhood in the title of the film if I remember it correctly.
Probably at least the most impactful for me is a situation where I was at a dinner party, and I like to do these things where I go through jingles and songs and sing along and see if I can bring memories to people.
Rusty Close:
Huge hit at dinner parties.
Austin Padgett:
It’s just something I do. I understand people roll their eyes and are just burying themselves in their drinks. But it’s my entertainment. There was this product growing up called My Buddy.
Rusty Close:
I remember that, a doll for boys.
Austin Padgett:
Correct. Yes. There was also a girl version called Kid Sister. But My Buddy had this song, and it goes, "My buddy, my buddy." Then here's where the distinction was. I would sing, "Wherever I go, he goes, too." That is actually not the way the song goes. I was at this dinner party, and I was singing this song, and everybody was like, "Oh, yes. That's how it went." People were remembering My Buddy and fondly and thinking about that song. This guy goes, "That's not how the song goes." He goes, "It's my buddy, my buddy. Wherever I go, he goes." It just blew my mind that this was before you could easily go and just check things on your phone.
The next time I was at an Internet portal, so to speak, I checked, and he was right. To this day, I won't mention his name, but he lives rent-free in my head for just completely dismantling a childhood core memory of mine, as they call it on Instagram.
Rusty Close:
I got to say that in my head, it goes, “Wherever I go, he's going to go.” That's how it is in my head.
Austin Padgett:
Oh, interesting.
Rusty Close:
Maybe there's three realities where the streams have crossed.
Austin Padgett:
It might be. I can tell you for a fact because I've tried my best to disprove this guy because in all actuality, he was quite a jerk about it at this party, this and some football talk. But I will save that for another episode. I tried my best to find a version that had anything but what he's saying, and it was just that commercial that ran.
Rusty Close:
I mean, we don't have to get into string theory on this podcast, but I think that's probably what it is. The realities were separate at one point, and they've since crossed. He gets to have this victory this reality.
Austin Padgett:
Right. But there is a reality where you and I have complete domination over this guy.
Rusty Close:
100%.
Austin Padgett:
I'll let that be water under the bridge, so to speak. I'm at another event.
Rusty Close:
More jingles.
Austin Padgett:
As you know, I have friends of all ages.
Rusty Close:
Sure. Sure.
Austin Padgett:
I'm at this event. Multiple people are there, of course, and multiple people of different generations. I bring up the Band-Aid jingle. If you recall, it goes, "I'm stuck on Band-Aid because Band-Aid stuck on me." There's another version of that that people are singing, and it goes, "I'm stuck on Band-Aid brand because Band-Aid stuck on me." When I invite people to sing along to this thing, there's a clash.
Rusty Close:
Just throwing off the cadence.
Austin Padgett:
Yes. It's completely different. People are singing one word. Some are saying the other. It's like if you go to church, and some people say debts, and some people say trespasses. It just throws the vibe completely off, and it's a complete mess. But these are the types of things I love. All this to say, this episode is about hard-hitting journalistic efforts to expose the truth about the Band-Aid jingle.
Rusty Close:
I cannot wait. I can't wait.
Austin Padgett:
As you might expect because it's on this podcast and not our other journalistic song exploration podcast. It involves intellectual property concepts.
Rusty Close:
It's going to be amazing.
Austin Padgett:
Let me back up and get to some key concepts out there because this is what we need to know. It's all about trademark distinctiveness. Now, if you remember, we had some episodes long ago about some trademark efforts between some wrestlers and some panda-saving organizations. I want to send people back there, and it really sets up this lens that I was trying to talk about on that episode with you that trademarks and brands are best thought of as kind of consumer items. That a trademark or a brand is a signal to a consumer. When you go, Rusty, and you buy your Topps brand baseball cards, you know what you're getting.
Rusty Close:
Junk, junk wax.
Austin Padgett:
Well, you're not getting Donruss.
Rusty Close:
That's right. Yes. Not getting upper deck.
Austin Padgett:
Yes. You are getting what Topps provides in the level of quality and value.
Rusty Close:
Sure.
Austin Padgett:
You've probably first before. You've heard about it. It's been consistently advertised. This is what you're getting. Now, the laws around trademarks are really crafted as consumer protection laws first. That's the way you want to think about it. it’s to protect the link between the brand and the consumer's understanding so that they're not confused or duped in any way.
When you're thinking about what a trademark is, it's that flag to consumers of, "Hey, we're over here. This is what you can expect." But how much protection do you get? Do you get any protection over your trademark? Well, it's a sliding scale. When you evaluate how much protection a brand gets, the more distinctive or unique a mark is, the more protection it gets. There's a spectrum of distinctiveness. Rusty, did you take trademarks in law school?
Rusty Close:
I am reasonably familiar.
Austin Padgett:
Okay. You've at least done the CLE, continuing legal education, about –
Rusty Close:
I do all of them.
Austin Padgett:
Oh. You are that guy. You're always telling me about the best CLEs that you recently heard.
Rusty Close:
Yes, and that you need to get caught up before the end of the year.
Austin Padgett:
That's right. That's right. Well, the more distinctive or unique a mark is, the more protection it gets. It’s a sliding scale called the spectrum of distinctiveness is usually what it's called in the law school textbooks on trademarks. Let's just go through the spectrum in the categories, and we'll go from strongest to weakest.
Rusty Close:
Okay.
Austin Padgett:
The first one are fanciful marks, which is always a fun flourish to say.
Rusty Close:
Sure, yes.
Austin Padgett:
These are made up words, Rusty, that don't have any prior meaning.
Rusty Close:
Absent are knowing them because of their association with a brand. The words are just a collection of letters to begin with.
Austin Padgett:
Gibberish.
Rusty Close:
Yes, okay.
Austin Padgett:
Think of Kodak or Xerox. Those are the famous examples that often get thrown out there.
Rusty Close:
Exxon.
Austin Padgett:
Yes.
Rusty Close:
Gotcha.
Austin Padgett:
It sounds great, but you've just made up a word that nobody knows, and they would have to learn it as your brand. That’s the philosophical trade-off that happens when you have really strong trademarks. Your brand's strength actually lies in the challenge ahead of you in identifying your goods and services to your consumer. Those are fanciful, the highest, kind of right under or maybe matching at arbitrary marks, which make them sound lesser than. But they're very strong marks, very distinctive. These are marks where the word actually exists but is used in an unrelated context. Think of Apple or Amazon.
Rusty Close:
Yes, that makes sense to me. These are words that we're familiar with, but we don't associate them with a brand up until the point that they become associated with a brand.
Austin Padgett:
Yes, exactly. Yes, they're existing words. Apple is something, but it's not a computer, at least not until you say it is, and you spend a lot of money to tell people that it is and that sort of thing.
Rusty Close:
To build up that brand associated with that term.
Austin Padgett:
Exactly. These are very distinctive, highly protected, just right out of the box. Then you have suggestive marks. The thought here is that these are words that exist like arbitrary marks, but they're somehow connected to the concept of what you're offering. But they require some level of imagination to make the link to the product. The one that you see usually in a textbook or the CLE presentation is copper-toned sunscreen. The concept requires some level of imagination. You see the words copper tone, and you think, "Oh, maybe that's the result I will achieve when I lay out on the beach this summer."
Rusty Close:
I'm a big fan of the Panama Jack, like the spray-on oil, because I like a deep, dark, rich tone at the end of the summer.
Austin Padgett:
Absolutely, yes. Another amazing brand. After those three, so you have fanciful, arbitrary, and suggestive marks, there's this big line. This big line is that everything above that line that we just mentioned is automatically distinctive. It's inherently distinctive. That is it's a word, a mark capable of communicating a brand to a consumer rather than other types of information. Because they're in the realm of distinctiveness that does not impinge on common everyday speech, they have this automatic protection built in.
The idea that under the line is we're not going to give some sort of monopoly on everyday speech to a business or someone who's operating a brand. That's for a number of reasons that you can probably intuit. You want to promote fair competition. You want to give consumers information, if that makes sense.
Rusty Close:
Sure. Yes, I understand where you're coming from.
Austin Padgett:
Yes. The complicated part about this is that under this line, you actually can achieve trademark status because there's this splintering. There are two categories, basically. There's descriptive marks, which may be more accurately as descriptive words and/or marks. Then there's generic words, which are not marks. The descriptive marks are these are words that describe something about the product. We'll talk about other non-word marks in some future episodes. If someone's going to write it to us, we get these random comments and emails from people.
Rusty Close:
All the time.
Austin Padgett:
Other trademark lawyers who are the worst. Love you all. But listen, I don't need to be nitpicked.
Rusty Close:
Yes, we don't need any know-it-alls reaching out to us.
Austin Padgett:
Yes, absolutely. Hang with us. This is for the people, so we're trying to make these concepts very easily understood, at least as much as we can, and fun. These are words, and I understand there are other types of marks other than words, and we'll get to that in a future episode, that describe something about the product. By themselves, they're not marks. They're not inherently distinctive. They're just words. But with time or marketing or exposure, they can become distinctive of a particular provider. One of the examples I like is Best Buy because probably to you, Rusty, when I say Best Buy, you know exactly what I'm talking about.
Rusty Close:
Many, many CD purchases there.
Austin Padgett:
Absolutely. CDs, games. I like to go and see how many televisions they have on a wall back in the back. By itself, Best Buy has been ruled, and Best Buy has already agreed in some of its trademark filings and the way it filed its trademarks that Best Buy is just a descriptive phrase that this is the best you can purchase basically. It's hard to say it without saying Best Buy. But over time in the exposure and the amount of stores and the amount of advertising and the layouts in your newspapers that you would get back in the day when we had newspapers where they had the inserts from Best Buy, you just know this is an electronics store.
Best Buy, where it had some descriptive meaning, is now actually a very protected mark because it has acquired distinctiveness through its use and through these efforts. There are those types of phrases and words that are descriptive that can become distinctive enough to become trademark protectable so that you could stop somebody from using something that's going to cause confusion with your word.
Rusty Close:
It’s not to the point where it's called food store. It's not a grocery store chain that's called food store.
Austin Padgett:
Right.
Rusty Close:
It's Best Buy. Sort of descriptive but it's not necessarily descriptive of electronics and consumer goods. It just sort of gains that over time.
Austin Padgett:
That's exactly right. At some point on Frodo's journey of branding, you cross into Mount Doom of generic-ness, where no longer are the descriptive words you're using capable of actually doing anything for trademark purposes. These are the words people use.
Rusty Close:
These are just words.
Austin Padgett:
Right. Soap, milk, pizza parlor. Keep in mind, you could start a computer company and call it Soap maybe. I don't know. We haven't done a trademark search on it.
Rusty Close:
Right, right. This is not legal advice here.
Austin Padgett:
Exactly. If you go back up our list, that would be an arbitrary usage of soap. Or you call it milk or pizza parlor. But if you're talking about soap, soap is generic. Milk is generic for milk and pizza parlor for a pizza parlor. That is the distinctive spectrum there of trademarks, the spectrum of distinctiveness.
Here comes the dilemma, which does not have the letter N in it, which is another Mandela Effect circling back there. You can tell it. We're almost pro at this podcasting thing now.
Rusty Close:
Classic callback.
Austin Padgett:
Yes. What happens when you create a strong brand, but your success gives you a position in the marketplace? You're the market leader. Your brand is very strong. Maybe you're even first to market, and you've created the language around what the product is. What can happen is that consumers start using your brand, and maybe you had a brand that was at the very top. You came up with a word. It's either fanciful, arbitrary, suggestive. It's a very strong brand. But now, you've got consumers using your brand as a generic identifying word for what's going on. Worse than that, potentially, you have your competitors doing that.
Rusty Close:
Your product, whatever it is, and the sort of descriptive trademark type name that you gave to that product becomes so ubiquitous that any product that is that same thing gets referred to with your name.
Austin Padgett:
That's right. We call this weirdly genericide. That's what those in the trademark biz –
Rusty Close:
Sounds serious.
Austin Padgett:
That's right. That's what they call it. For some reason, they had to make it like a murderous type of felonious type of word. One of the key items out there is aspirin. You'll hear aspirin talked about because it was a trademark at one point. It's a little complicated in the sense that that trademark asset was forfeited as the result of a world war. But look at where we are now. You probably commonly refer to aspirin as aspirin without even thinking that it was once a brand of someone's.
Rusty Close:
What was the underlying good? What do you call it when it's not aspirin?
Austin Padgett:
Is it acetaminophen?
Rusty Close:
Yes, acetaminophen or something along those lines.
Austin Padgett:
Yes, yes.
Rusty Close:
This is an IP podcast, not a science podcast, right?
Austin Padgett:
Yes. I don't take a lot of medicine. I know that there are medicines that do things.
Rusty Close:
Sure, and you know what aspirin does. You don't know what its underlying title is.
Austin Padgett:
Yes. In all honesty, my wife kind of figures out what needs to be taken and whatever the malady is that has to be adjudicated, so.
Rusty Close:
She gives you the little pill cup in the morning, and you just go with it.
Austin Padgett:
Right, exactly. Yes. You look tired. Here, take this.
Rusty Close:
It's a lot of trust.
Austin Padgett:
It's a lot of trust, yes. Where you have generic side, oftentimes, it’s met with where the actual generic description is long, like acetaminophen. It’s a lot easier just to say aspirin, where it's a complicated phrase or word or concept. Your mark is a lot easier to say. Like I mentioned, maybe you were first to market, where all of a sudden, you're actually labeling the thing better than what consumers would actually come up with themselves to kind of naturally describe what's happening here.
I've got a list of a few things that this happened to. A famous one, it's in the law school textbooks, thermos. What better way to refer to your vacuum insulated flask than with a quick two-syllable word? Easy to spell. Great one. Zipper, would you rather say interlocking fastening mechanism?
Rusty Close:
Yes. It’s almost this idea that we had to come up with words for things that didn’t exist at one point. Then they just became known as the words that were associated with them.
Austin Padgett:
Exactly, exactly. Dumpster is another one for removable garbage bins. The one I like to think about is what would it be like to be the person show came up with chicken fingers, which to me is funny. Then watch everyone just start using it. Now, my kids will order those chicken fingers at a restaurant and not even think about how incongruous or funny the concept of a chicken with fingers is. That's a small list. There are a lot of others that have at least faced this challenge before. But one thing that you've probably gotten to, Rusty, is that you'll describe this potential problem to a client, and they'll say, "Oh, it would be my greatest joy."
Rusty Close:
Right. Yes. What a terrible problem to have. My product is so ubiquitous that this is what everyone in the world calls it, whether it's mine or a competitor's.
Austin Padgett:
Yes, yes. I hear them on it. Like you, I don't want to be the attorney in the room who's just destroying everyone's hopes and joys, which we often do as a self-loathing attorney. I just try to watch out for that a lot.
Rusty Close:
Yes.
Austin Padgett:
I hear them. I think the issue really is particularly for those companies where the brand is the primary asset, is the large driver of consumer activity and revenue, we don't have a patent anymore on something. Maybe it's just something that's very simple to create and recreate, and so you don't have a lot of other types of protections around it. What you might have is the language around the product and in the branding. If you can isolate that in the marketplace, I mean, you can really dominate that way without even having any of these other things. The thought of becoming generic actually really threatens the business concept that you have. What do you do to save your beloved brand in these circumstances becomes the question.
Rusty Close:
When you say save, you mean how do you keep it from becoming genericized?
Austin Padgett:
That's right.
Rusty Close:
Yes, okay.
Austin Padgett:
From that felonious act of consumers starting. Particularly, I think it really comes down to when other competitors start using your mark generically. That's just a bridge too far. That's planting the flag in the middle of the field, so to speak. It's going to cause a stir.
Rusty Close:
A competitor comes along and says, "Buy our new, whatever it is, thermos." Right? They don't refer to it as an insulated bottle. They are actually calling it a thermos and putting their branding on top of that.
Austin Padgett:
Yes.
Rusty Close:
Yes. Okay.
Austin Padgett:
You can see where this could also become another problem, where if you think you have a brand and people are using your mark generically with their mark, all of a sudden, it looks like a co-branded product. All sorts of confusion could arise, at least theoretically. I mean, as a brand owner, you might have a big problem on your hands. Remember, this is all about consumer perception and the language around the products. What you have to do is you have to go on a campaign to change the way people talk about your brand and the products.
Let's stop there, and let me take you to 1920, when Earl Dixon invented the adhesive bandage.
Rusty Close:
Love it.
Austin Padgett:
This guy, Earl, combined surgical tape and gauze, and he put a removable protective sheet over the adhesive. As the story goes, his wife was frequently injured while cooking, and that's the reason he came up with this.
Rusty Close:
Must have been a big issue.
Austin Padgett:
To invent a product that doesn't solve the underlying problem.
Rusty Close:
Sure. It is literally a Band-Aid. They were putting a Band-Aid on the problem.
Austin Padgett:
An adhesive bandage on the problem, yes.
Rusty Close:
Sure. Sure. Sure.
Austin Padgett:
It makes me wonder, like was it a consistent cooking issue that we could have had another invention out of and saved a lot of people along the way? But here we are. I didn't go that far in the research.
Rusty Close:
I don't want to speak to the character of his wife. But, I mean, we're talking prohibition era roughly, right? I mean, is she spending too much time in the speakeasies or something like that, then coming home trying to cook? Now, we've got these disastrous events happening.
Austin Padgett:
That's a good point. Alcohol plus knives and fire. Dangerous combination.
Rusty Close:
Can be. Can be.
Austin Padgett:
Yes. All that to say, 1921, the Band-Aid brand is launched. This thing gets off and is soaring. The Band-Aid brand, as you're looking at it, it's built on the combination of the word bandage and first-aid. It has some level of distinctiveness to it. It's a strong mark. You go on about 50 years, friends doing all right. There are other adhesive bandage providers out there. Then 1975 rolls around. Let me bring up a name for you, and that name is Barry Manilow.
Rusty Close:
I love it. I've gone from being a flapper, or my date is dressed in a flapper dress, and now I'm thinking Barry Manilow with his soothing smooth vocals.
Austin Padgett:
Yes. In between, you've done doo-wop. You've had The Summer of Love.
Rusty Close:
Yes. British invasion.
Austin Padgett:
Yes. You've had a great time. All along the way, when you've had a scratch, you've had an adhesive bandage to help you out there.
Rusty Close:
Yes.
Austin Padgett:
Barry Manilow, famous songwriter, comes up with this jingle that I sang earlier, and I'll save everyone from hearing again, that I'm stuck on Band-Aid because Band-Aid stuck on me. It is a complete banger. The brand becomes positioned as the total market leader for adhesive bandage products where I think – and I don't have this research. If I'm wrong, send me the nasty email. I invite it. I believe it's clearly the market leader. It certainly is on my store shelves locally.
Things are going well. The product is amazing. The brand is soaring. What could be the problem? Now, if you get your finger on the pulse of America at this time, the brand is potentially out-kicking its coverage for the reasons that we've spoken about earlier. There is concern at the Band-Aid headquarters that people are referring to any adhesive bandage as a Band-Aid.
Rusty Close:
Right.
Austin Padgett:
You read the room. You're the attorney in-house, Rusty. You read the room. You look what happened to thermos. You see what happened escalator. If your mark becomes generic, then your dirty competitors can start using the brand that you invested millions of dollars in creating, at least in today's money, to generically refer to their own products.
Rusty Close:
It's no longer an adhesive strip. It is a Band-Aid with their name preceding it.
Austin Padgett:
That's right. You pick your biggest competitor, and they start using it that way.
Rusty Close:
Right.
Austin Padgett:
It would be a bridge too far for your marketing folks. They would lose their absolute minds.
Rusty Close:
Total disaster.
Austin Padgett:
Absolutely. You think about this in terms of online sales now. Let's say you and I venture out together with our wildly successful podcast, and we start offering our products, but we're online now. The problem becomes even more acute with search terms and trying to make sure you're getting what you're expecting from a purchase. What are the things that a brand can do?
Well, they can use the trademark or the circle R symbols, if you're registered, to let everyone know that it's a mark. You can use the actual generic words along with your brand, which is what a lot of companies do. That's kind of like classic trademark attorney advice is, "Hey, make sure you use your brand, and then you call it what it is." It's rollerblade inline skates. It's not just rollerblades.
Rusty Close:
Sure. Obviously, the problem there is it’s a little bit of a mouthful, right? You'd rather just say rollerblades. The flip side is, "Hey, you need to use it this way. You need to say rollerblade inline skates, or here's the thing that can happen."
Austin Padgett:
Yes, exactly. This is where getting to the practitioner level. This is where I try to be judicious with clients and say, "Hey, let's measure the risk reasonably. What's really at issue here? Where can we prop up our brand, but get me out of the way of what you're trying to do marketing-wise for your business?" I'm going to step in when it goes too far, and you're really putting the brand at issue. But let me help you find a way to sell your stuff the way you want to do it, but also make sure that we're preserving the brand and being good stewards for those who come after us so that we're not tanking the whole thing.
Rusty Close:
I mean, is there any sort of guidance that you give? How do you know when you're walking up to that line, right? How do you know when your product, your adhesive strips that you're calling Band-Aids are about to be universally referred to as Band-Aids, right? Can you see that coming?
Austin Padgett:
There are definitely signs, right? I mean, you're going to see it because it's one of those checks that you have to do. It's like football teams that are wildly successful and then aren't wildly successful anymore. What happened along the way? Well, somebody took their eye off of the ball. There was something happening in that in-between. That's a good signal. If you're having wild success with your brand, it's a good signal actually to keep an eye on, "Okay, what's happening out there with the language around my products? How are people using my brand?" Because, particularly in our day, you're going to have real problems online potentially. You've got to think about that. I would say, one, I'm looking for – when I send a cease and desist letter to a competitor, are they coming back with dozens of instances of people referring to the products generically?
Rusty Close:
Right.
Austin Padgett:
Now, I've got a potential issue. Because as you would probably expect, at court, I don't think courts are going to easily – it's a high bar to prove genericness or genericide a mark. I don't think courts are – I don't think a judge wants – it's not a good feeling, I don't think, to take a brand, particularly one that's been around for decades and decades, and say, "This is now common parlance. I'm going to dictate what common parlance is in an industry for a company that probably owns a trademark registration that has all sorts of presumptions in their favor and all these kind of legal advantages to, all of a sudden, say, "You know what? We're going to overcome this and this is now generic." I think you have to have a mountain of evidence that this has become generic potentially in different ways.
I mean, there are some key things, and one of them is the way you use your mark. If you set it up and you're already using it in a generic sense, that can become a real problem. But you're also looking at, "Okay, are there dozens and potentially even more than that, instances online where people are legitimately using the name in such a way? I've got to start thinking. Okay, I need to address this somehow."
To answer your question, there's no fine line. But those are the triggers I'm looking for to think through what's happening here. Because while a judge might not want to do it, it is definitely a possibility and has been done before. A judge also might be swung by, "Look at the marketplace. People are using these words. We're not going to allow this company to come in and tell us what we can and can't do with these words." There is a tipping point at some point where you might have had a brand before. You don't have it any longer.
Rusty Close:
It seems like you'd have to be, as the brand owner, fairly asleep at the wheel for the proverbial horse to get so far out of the barn that you couldn't get your arms back around it. I mean, I would think you'd have to be pretty careless.
Austin Padgett:
It's either that. Or I think you and I have had these clients that will say, "That's the best measure of my success."
Rusty Close:
Sure.
Austin Padgett:
At some point, it becomes irreversible. I mean, you can't sue everyone, and you probably don't even have grounds to sue a regular consumer just using everyday language.
Rusty Close:
Right.
Austin Padgett:
That's part of the challenge, too, is to keep the mindset of I want to build the brand. I want it known. I want it known in this way. But there's a line that it can't cross. That's important for both free speech and fair competition. You have all these different ways. You use the symbols. You use your generic words alongside your brand. You can police the misuse, particularly by your competitors is a lot of times what you're looking for. Then you build ad campaigns to highlight the distinctive nature of your brand.
Xerox, the photocopying business had this same problem that it's a mouthful to say photocopier when you could say Xerox. Fair enough. But Xerox, as a distinctive brand, they made it up. I mean, it's a coined, fanciful word, going back to our spectrum of distinctiveness. They had this campaign where the ad said, "You can't Xerox a Xerox on a Xerox copier."
Rusty Close:
Right. It's not a verb.
Austin Padgett:
Right. Velcro had a song that's called the Don't Say Velcro song. If someone's interested, they can go look that one up. Maybe one day we'll get the rights to it and play it on the pod.
Rusty Close:
Is that similar, though? Is it using it as a verb, like don't Velcro this thing?
Austin Padgett:
Well, it's really anything where you're divorcing the meaning from that particular provider's product from the concept of the product. It's like you're referring to any other persons – I don't know what you generically refer to Velcro as.
Rusty Close:
Hook and loop. I think it's a hook and loop fastener. Yes.
Austin Padgett:
Yes. Hook and loop. Taking that – if you have ABC company providing it and they call it, "Oh, it's our ABC Velcro."
Rusty Close:
Right. Okay.
Austin Padgett:
But, yes, for sure, making your – like going rollerblading. You turn it into some sort of verb, a gerund in this case. That's an issue because it starts to – and that might not be the item that creates it as a generic mark, but it's the straw on the camel's back, right? I mean, you just have enough instances.
Rusty Close:
Sure. When it gets to that point, pretty good indicator.
Austin Padgett:
Right. Late eighties, the word brand was added to this jingle as a proactive step to help avoid the Band-Aid mark from becoming generic and to reinforce that the name is a trusted household brand. Other companies have taken this route. You'll see Popsicle brand ice pops and Jell-O brand gelatin. But that is the time period at which there is a switch. I'm stuck on Band-Aid to I'm stuck on Band-Aid brand, and it was for this exact reason. There was no Mandela Effect here, unfortunately. As much as we talked about it, this actually happened.
Rusty Close:
You can actually point to the point in time when this occurred.
Austin Padgett:
In fact, because of that time period, you might have generational understandings of what that song was versus the new song where they consistently use the word brand inside of it. But like I said, if that Barry Manilow song was a core memory for someone early in their life in the late seventies into the early eighties, then they may have a different conception of what the song is because they learned it in that way and have it stuck in their memory. But it's been changed since and been consistently used. But it was done for that reason.
It actually happened. I love the Mandela Effect idea, and that's what I thought we might have at some point when I heard people seeing two different versions of the song. But, in fact, there's a story here, and that's what this journalistic effort was all about. I think we uncovered all of it. Anything to add, Rusty?
Rusty Close:
No, I don't think so. If we go back to our original question, why did the Band-Aid song change, it was in an effort by the brand holder to keep the mark from going generic.
Austin Padgett:
Yes, to avoid genericide.
Rusty Close:
Genericide. Yes. Okay. Interesting.
Austin Padgett:
Yes. We'll close it out there. I want to remind people that our other episodes are available on any podcast platform that you could reasonably use, so find us. Like us. Subscribe to us. Give us a five-star. Make us even better in the eyes of our firm management. It's hard to imagine that we could accomplish that. But more and more glowing are the types of reviews we're getting from the brass. Help us out there. Subscribe and like. Thanks, everyone. We'll talk to you soon.
Rusty Close:
Thanks, everyone.
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