What Proves That a Mark Has Become Generic?

Generic names for goods and services may not be registered as trademarks under the Lanham Act, and registered marks that have become the generic name for the goods or services may be cancelled at any time (15 U.S.C. '14(3)). Words that were originally trademarks designating the source for particular products, such as 'escalator' and 'thermos,' have lost that status and become the generic name for all such products. Companies whose marks are in danger of losing their distinctiveness as source indicators may take steps to raise the public's consciousness and prevent their marks from becoming generic. One such well-known advertising campaign is run by Xerox Corporation to educate the public to use a 'photocopying machine' or 'to photocopy' in place of the registered trademark XEROX.

The 'M4' Weapon

A generic term answers the question 'What are you?', while a trademark answers the question 'Where do you come from?' McCarthy on Trademarks and Unfair Competition '12:1 (2007). The recent decision by the U.S. Court of Appeals for the First Circuit in Colt Defense LLC v. Bushmaster Firearms, Inc., 82 USPQ2d 1759 (1st Cir. 5/18/07) answers the question 'What proof is necessary to show that a mark has become generic?'

In the mid-1980s, Colt developed for the U.S. military a more compact version of the M16, Colt's small-caliber, gas-operated carbine rifle. The military named the new weapon the 'M4.' It was a lightweight, gas-operated, air-cooled, magazine-fed, selective-rate-of-fire carbine with a collapsible stock. In the mid-1990s, Colt claimed that the military had breached a licensing agreement concerning proprietary information about the M16. The agreement settling that dispute also contained provisions that the M4 design was proprietary to Colt and that Colt would be the sole supplier of the M4 weapon to the military until 2011.

Bushmaster is a Colt competitor in the carbine market outside the military arena. They both used the term 'M4' in marketing their versions of carbines. Bushmaster first used M4 in advertising in 1991, and Colt first used M4 in advertising in 1992. At least 13 other gun manufacturers also used M4 to describe their products, including Heckler & Koch, Inc.

Colt registered M4 on the Principal Register, as U.S. Trademark Reg. No. 2,734,001, issued July 8, 2003. In 2004, Colt sued Bushmaster and Heckler & Koch for infringing the M4 mark. Heckler & Koch settled, with an agreement acknowledging that Colt owned the M4 trademark and that the mark was 'valid and enforceable' and 'should not be cancelled on the grounds of genericness.' Bushmaster, however, counterclaimed for cancellation of Colt's trademark registration and moved for summary judgment that the M4 mark was generic for a class of carbines. The district court agreed that the mark was generic and cancelled the registration.

On appeal, the First Circuit noted that the primary significance of a generic term is to identify to the relevant public 'the nature of the good, rather than its source.' A registration on the Principal Register provides a rebuttable presumption that the mark is not a generic term. To overcome that presumption, Bushmaster had to demonstrate genericness by a preponderance of the evidence. Such evidence may come from any competent source, such as consumer surveys, media publication and competitor uses, purchaser testimony, and the registrant's own use.

Bushmaster rebutted the presumption with evidence of media publications using the term M4 generically, as a type of carbine with certain characteristics, not a brand from Colt. Other articles Bushmaster introduced reviewed and compared M4 carbines made by different manufacturers. Those articles referred to the manufacturer's names as the source of the guns, such as 'Bushmaster M4A1' and 'Colt M4A1.'

The appeals court also approved Bushmaster's introduction of evidence of use of the term M4 in advertising by Colt's other competitors. Where members of the public see a term used by many competitors, they are less likely to identify the term with one particular producer. The court found that Bushmaster's evidence of 13 other competitors' use of M4 was stronger than similar evidence used to prove that 'brick oven' was generic for pizza. Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006).

Further probative evidence comprised e-mail messages from Bushmaster's customers using M4 as a generic descriptor for the type of gun they wanted to purchase, rather than identifying the gun manufacturer. Bushmaster also showed that Colt itself used M4 generically, in a patent application referring to 'M4
type rifles and carbines.' Although Bushmaster did not introduce any consumer survey evidence, the court indicated that surveys, although desirable, are not required. The court found that this combination of evidence rebutted the presumption that M4 was not generic for particular carbines and was sufficient to support a summary judgment finding for Bushmaster.

Colt challenged the media articles as having 'limited significance,' but the court determined that they showed the meaning of M4 to the relevant consuming public because they were found in consumer-oriented publications, such as Soldier of Fortune and Shotgun News, and a consumer-oriented Web site. The court also rejected Colt's contention that the customer e-mail messages showed confusion rather than genericness. Bushmaster's purchasers did not understand M4 to be a replacement for 'Colt,' but intentionally wrote to Bushmaster about its weapons, not Colt's weapons. Nor could Colt continue to rely on its registration certificate to defeat summary judgment once Bushmaster rebutted the presumption that the mark was registrable. The certificate alone does not create a per se issue of contested material fact.

Colt challenged the exclusion of evidence that the military associates M4 with Colt. The court agreed that such evidence could not be excluded simply because the military was not free to choose among competing products due to its sole source contract with Colt. However, that evidence was insufficient to create a material issue of fact. The settlement with the military in which it stated that the M4 was a carbine designed by Colt resolved an intellectual property dispute. It was evidence of a business relationship of a limited duration, not of the military's 'general and enduring understanding' of what M4 meant outside the contract. Genericness, held the court, concerns the common use of language, not defined terms in a negotiated contract with the trademark owner. Indeed, such terms are defined in agreements, because the common usage does not accurately capture the parties' intended meaning. Moreover, the military originally coined the term M4.

Likewise, the settlement with Heckler & Koch in which it stated that Colt owned the M4 trademark and that it should not be cancelled for genericness, is only evidence that it agreed to a legal conclusion for which Colt negotiated to settle its suit. That settlement language does not prove what the relevant public understands M4 to mean.

Lastly, the court rejected Colt's argument that there are other words that adequately describe an M4 and can be substituted for that term, such as 'carbine,' 'rifle,' and 'firearm,' because none of those terms captures the M4's characteristics of being a 'lightweight, gas-operated, air-cooled, magazine-fed, selective-rate-of-fire weapon with a collapsible stock.' Although Colt was integral to development of that weapon, the relevant consuming public associates M4 with a military designation for a carbine with certain characteristics, not with Colt as the producer. Summary judgment canceling Colt's registration was therefore justified.

Colt's application to register M4 was originally refused because the PTO examiner found it to be generic as applied to the goods ' 'firearms, namely rifles and spare parts and replacement parts for rifles.' Colt overcame that refusal by arguing that although the military coined the designation M4, it is Colt that uses the mark in commerce in the ordinary course of trade, not the military, and Colt to which the mark therefore belongs. Colt also argued that the mark had acquired distinctiveness through substantial sales and advertising for more than five years. As no amount of sales and advertising can make a generic mark distinctive, that evidence would also have been insufficient to create a material issue of fact to defeat Bushmaster's summary judgment motion.

The Case of 'Aspirin'

It is well known that 'aspirin' is generic for pain relievers in the United States, although not in many other countries, where it is still the trademark of Bayer AG. The Federal Circuit recently rejected Bayer's evidence of 100 years of trademark significance of the term 'Aspirina' in foreign countries as irrelevant to U.S. consumer perception of the term. Because Aspirina means aspirin in Spanish and is substantially similar to the generic word aspirin, the Federal Circuit upheld the TTAB's refusal to allow registration on the grounds that Aspirina was merely descriptive of pain relievers generally. In re Bayer Aktiengesellschaft, Appeal No. 2006-1279 (Fed. Cir. May 24, 2007).

Conclusion

Once a mark has become generic, it is extremely difficult to prove that it has reacquired distinctiveness as a source indicator. Owners who create arbitrary or fanciful marks must take care that they and the public are using those marks in a proper trademark sense, namely as an adjective rather than as a noun or a verb, and that they have provided the public with alternatives for describing their products other than the mark itself. Wikipedia, the online encyclopedia whose articles are generated by volunteers, has an article titled 'List of generic and genericized trademarks.' PTO examiners and at least one court have cited such Wikipedia articles as evidence that a mark has become generic. Krav Maga Ass'n of America, Inc. v. Yanilov, 464 F. Supp.2d 981, 987 (C.D. Cal. 2006). Trademark owners may wish to monitor Wikipedia mentions of their trademarks and to substitute more neutral and accurate entries in place of unsupported suggestions that a mark has become generic.

Judith L. Grubner is a partner in the Chicago office of Michael Best & Friedrich LLP. E-mail: [email protected].

Generic names for goods and services may not be registered as trademarks under the Lanham Act, and registered marks that have become the generic name for the goods or services may be cancelled at any time (15 U.S.C. '14(3)). Words that were originally trademarks designating the source for particular products, such as 'escalator' and 'thermos,' have lost that status and become the generic name for all such products. Companies whose marks are in danger of losing their distinctiveness as source indicators may take steps to raise the public's consciousness and prevent their marks from becoming generic. One such well-known advertising campaign is run by Xerox Corporation to educate the public to use a 'photocopying machine' or 'to photocopy' in place of the registered trademark XEROX.

The 'M4' Weapon

A generic term answers the question 'What are you?', while a trademark answers the question 'Where do you come from?' McCarthy on Trademarks and Unfair Competition '12:1 (2007). The recent decision by the U.S. Court of Appeals for the First Circuit in Colt Defense LLC v. Bushmaster Firearms, Inc. , 82 USPQ2d 1759 (1st Cir. 5/18/07) answers the question 'What proof is necessary to show that a mark has become generic?'

In the mid-1980s, Colt developed for the U.S. military a more compact version of the M16, Colt's small-caliber, gas-operated carbine rifle. The military named the new weapon the 'M4.' It was a lightweight, gas-operated, air-cooled, magazine-fed, selective-rate-of-fire carbine with a collapsible stock. In the mid-1990s, Colt claimed that the military had breached a licensing agreement concerning proprietary information about the M16. The agreement settling that dispute also contained provisions that the M4 design was proprietary to Colt and that Colt would be the sole supplier of the M4 weapon to the military until 2011.

Bushmaster is a Colt competitor in the carbine market outside the military arena. They both used the term 'M4' in marketing their versions of carbines. Bushmaster first used M4 in advertising in 1991, and Colt first used M4 in advertising in 1992. At least 13 other gun manufacturers also used M4 to describe their products, including Heckler & Koch, Inc.

Colt registered M4 on the Principal Register, as U.S. Trademark Reg. No. 2,734,001, issued July 8, 2003. In 2004, Colt sued Bushmaster and Heckler & Koch for infringing the M4 mark. Heckler & Koch settled, with an agreement acknowledging that Colt owned the M4 trademark and that the mark was 'valid and enforceable' and 'should not be cancelled on the grounds of genericness.' Bushmaster, however, counterclaimed for cancellation of Colt's trademark registration and moved for summary judgment that the M4 mark was generic for a class of carbines. The district court agreed that the mark was generic and cancelled the registration.

On appeal, the First Circuit noted that the primary significance of a generic term is to identify to the relevant public 'the nature of the good, rather than its source.' A registration on the Principal Register provides a rebuttable presumption that the mark is not a generic term. To overcome that presumption, Bushmaster had to demonstrate genericness by a preponderance of the evidence. Such evidence may come from any competent source, such as consumer surveys, media publication and competitor uses, purchaser testimony, and the registrant's own use.

Bushmaster rebutted the presumption with evidence of media publications using the term M4 generically, as a type of carbine with certain characteristics, not a brand from Colt. Other articles Bushmaster introduced reviewed and compared M4 carbines made by different manufacturers. Those articles referred to the manufacturer's names as the source of the guns, such as 'Bushmaster M4A1' and 'Colt M4A1.'

The appeals court also approved Bushmaster's introduction of evidence of use of the term M4 in advertising by Colt's other competitors. Where members of the public see a term used by many competitors, they are less likely to identify the term with one particular producer. The court found that Bushmaster's evidence of 13 other competitors' use of M4 was stronger than similar evidence used to prove that 'brick oven' was generic for pizza. Schwan's IP, LLC v. Kraft Pizza Co. , 460 F.3d 971 (8th Cir. 2006).

Further probative evidence comprised e-mail messages from Bushmaster's customers using M4 as a generic descriptor for the type of gun they wanted to purchase, rather than identifying the gun manufacturer. Bushmaster also showed that Colt itself used M4 generically, in a patent application referring to 'M4
type rifles and carbines.' Although Bushmaster did not introduce any consumer survey evidence, the court indicated that surveys, although desirable, are not required. The court found that this combination of evidence rebutted the presumption that M4 was not generic for particular carbines and was sufficient to support a summary judgment finding for Bushmaster.

Colt challenged the media articles as having 'limited significance,' but the court determined that they showed the meaning of M4 to the relevant consuming public because they were found in consumer-oriented publications, such as Soldier of Fortune and Shotgun News, and a consumer-oriented Web site. The court also rejected Colt's contention that the customer e-mail messages showed confusion rather than genericness. Bushmaster's purchasers did not understand M4 to be a replacement for 'Colt,' but intentionally wrote to Bushmaster about its weapons, not Colt's weapons. Nor could Colt continue to rely on its registration certificate to defeat summary judgment once Bushmaster rebutted the presumption that the mark was registrable. The certificate alone does not create a per se issue of contested material fact.

Colt challenged the exclusion of evidence that the military associates M4 with Colt. The court agreed that such evidence could not be excluded simply because the military was not free to choose among competing products due to its sole source contract with Colt. However, that evidence was insufficient to create a material issue of fact. The settlement with the military in which it stated that the M4 was a carbine designed by Colt resolved an intellectual property dispute. It was evidence of a business relationship of a limited duration, not of the military's 'general and enduring understanding' of what M4 meant outside the contract. Genericness, held the court, concerns the common use of language, not defined terms in a negotiated contract with the trademark owner. Indeed, such terms are defined in agreements, because the common usage does not accurately capture the parties' intended meaning. Moreover, the military originally coined the term M4.

Likewise, the settlement with Heckler & Koch in which it stated that Colt owned the M4 trademark and that it should not be cancelled for genericness, is only evidence that it agreed to a legal conclusion for which Colt negotiated to settle its suit. That settlement language does not prove what the relevant public understands M4 to mean.

Lastly, the court rejected Colt's argument that there are other words that adequately describe an M4 and can be substituted for that term, such as 'carbine,' 'rifle,' and 'firearm,' because none of those terms captures the M4's characteristics of being a 'lightweight, gas-operated, air-cooled, magazine-fed, selective-rate-of-fire weapon with a collapsible stock.' Although Colt was integral to development of that weapon, the relevant consuming public associates M4 with a military designation for a carbine with certain characteristics, not with Colt as the producer. Summary judgment canceling Colt's registration was therefore justified.

Colt's application to register M4 was originally refused because the PTO examiner found it to be generic as applied to the goods ' 'firearms, namely rifles and spare parts and replacement parts for rifles.' Colt overcame that refusal by arguing that although the military coined the designation M4, it is Colt that uses the mark in commerce in the ordinary course of trade, not the military, and Colt to which the mark therefore belongs. Colt also argued that the mark had acquired distinctiveness through substantial sales and advertising for more than five years. As no amount of sales and advertising can make a generic mark distinctive, that evidence would also have been insufficient to create a material issue of fact to defeat Bushmaster's summary judgment motion.

The Case of 'Aspirin'

It is well known that 'aspirin' is generic for pain relievers in the United States, although not in many other countries, where it is still the trademark of Bayer AG. The Federal Circuit recently rejected Bayer's evidence of 100 years of trademark significance of the term 'Aspirina' in foreign countries as irrelevant to U.S. consumer perception of the term. Because Aspirina means aspirin in Spanish and is substantially similar to the generic word aspirin, the Federal Circuit upheld the TTAB's refusal to allow registration on the grounds that Aspirina was merely descriptive of pain relievers generally. In re Bayer Aktiengesellschaft, Appeal No. 2006-1279 (Fed. Cir. May 24, 2007).

Conclusion

Once a mark has become generic, it is extremely difficult to prove that it has reacquired distinctiveness as a source indicator. Owners who create arbitrary or fanciful marks must take care that they and the public are using those marks in a proper trademark sense, namely as an adjective rather than as a noun or a verb, and that they have provided the public with alternatives for describing their products other than the mark itself. Wikipedia, the online encyclopedia whose articles are generated by volunteers, has an article titled 'List of generic and genericized trademarks.' PTO examiners and at least one court have cited such Wikipedia articles as evidence that a mark has become generic. Krav Maga Ass'n of America, Inc. v. Yanilov , 464 F. Supp.2d 981, 987 (C.D. Cal. 2006). Trademark owners may wish to monitor Wikipedia mentions of their trademarks and to substitute more neutral and accurate entries in place of unsupported suggestions that a mark has become generic.

Judith L. Grubner is a partner in the Chicago office of Michael Best & Friedrich LLP. E-mail: [email protected].