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[PHInventor]

I have avoided any use in which my trademark name could be substituted for a noun (e.g. "table") or a verb (e.g. "throw").

But I have heard that exceptions exist when treating the trademark as a proper name.  For example, if my company name is X (a trademarked name), I can have a press release that says "X will be opening an office in downtown Minneapolis," as long as it is clear that I am referring to the company rather than to the product.

Now, I thought I also read somewhere that I can say things like "Experience the power of X."  This passes the no-noun law, since "Experience the power of table" makes no sense.  Is this right? 

Any help here would be appreciated! 

Also, any references would be very helpful.  Neither the USPTO nor the INTA brochure provides much depth of information about how to use trademarks in practice.

[Isaac]

Now, I thought I also read somewhere that I can say things like "Experience the power of X."  This passes the no-noun law, since "Experience the power of table" makes no sense.  Is this right?

It does not make sense because tables do not have power.  There are plenty of nouns and noun like constructs that you can substitute for X that would make sense.  X must be something or someone that can possess.

Both noun and verb uses (e.g., Xeroxing a document) can be problematic.   Even adjective uses (e.g., Scotch tape) can create the wrong impression.

A better rule is to avoid uses that imply that your trademark, alone or in combination with another word is the generic name for your product.  In some cases that rule is in conflict with other goals you have for your trademark.  The wiki article titled "Genericized Trademark" does a fairly good job of explaining the problem and of pointing out some solutions others have used. 
   
If Your company name is identical to your trademark then you can still use your company name in its usual way.  It wouldn't hurt to use Co., Inc, etc. with your company name in cases where confusion about whether you are using your name as a trademark can arise.

[PHInventor]

It does not make sense because tables do not have power.  There are plenty of nouns and noun like constructs that you can substitute for X that would make sense.  X must be something or someone that can possess.

Well...after thinking this over, I do agree with the main point but will quibble with the specifics. The reason you can't use "table" in that manner is not because tables do not have power.  It's because "table" denotes a specific object, rather than indicating a fundamental substance with properties beyond an individual example of that substance.  For example, you can say "Experience the power of solar energy," or "Experience the solidity of rock."  But you can't say "Experience the flatness of table," even though tables are flat.

But since solar energy and rock are nouns, the examples above to confirm your point that I cannot use a TM name in this manner, so thank you.   

BTW for those readers who are interested, do you know why it is OK for Coca-Cola to have ads saying things like "A Coke and a Smile" or "I'd love to give the world a Coke" etc.?  Since there are any number of apparent noun-based uses of known products in ads ("A Manwich is a meal"  "Leggo my Eggo"), how do these companies avoid genericization of their product names?   I used to be confused by this but I believe I figured out the answer....

[Isaac]

BTW for those readers who are interested, do you know why it is OK for Coca-Cola to have ads saying things like "A Coke and a Smile" or "I'd love to give the world a Coke" etc.?  Since there are any number of apparent noun-based uses of known products in ads ("A Manwich is a meal"  "Leggo my Eggo"), how do these companies avoid genericization of their product names?   I used to be confused by this but I believe I figured out the answer....

The Coke one is fairly easy.   A Coke is not just a cola; it is made with a special secret formula.  Coke is different from Pepsi, RC, and other colas.  So as long as Coke takes steps to avoid Coke being used generically to refer to other colas, they are avoiding the use of Coke as a generic identifier for cola.  For example if you order a Pepsi in a Coca-Cola vending establishment, normally the server will correct you and offer to sell you a Coke. 

My theory does not work so well for Manwich or Eggo.  On the other hand "L'Eggo my Eggo" is itself a trademark.  "A sandwich is a sandwich, but a Manwich is a meal." is a slogan. 

What's your answer?

[PHInventor]

The Coke one is fairly easy.   A Coke is not just a cola; it is made with a special secret formula.  Coke is different from Pepsi, RC, and other colas.  So as long as Coke takes steps to avoid Coke being used generically to refer to other colas, they are avoiding the use of Coke as a generic identifier for cola.  For example if you order a Pepsi in a Coca-Cola vending establishment, normally the server will correct you and offer to sell you a Coke.

I beg to differ. A product's other unique qualities may be protected by trade secrets and patents, but the trademark name can only be protected if the trademark rules are followed. Any use of a TM term as a noun, even if used solely for a particular product to distinguish it from another product in its class, will genericize the TM term and should invalidate it.  Cola is a generic term, so we should be referring to Coca-Cola soda, or Coca-Cola brand cola.

The bottom line: "Coke adds life" and similar phrases do not follow routine trademark prohibitions against using a TM as a noun.

My answer to this and to all the other obvious violations that we experience every day is simply that these companies have trademarked the entire phrases that would otherwise genericize the product.  If you look under the USPTO trademark search engine, you will find hundreds of such trademarked phrases (including "Coke adds life," "Things go better with Coke," etc.).

Why is this allowed?  My guess is that trademark law governing phrases, as opposed to trademarked objects, is a gray area.  (I would also guess that money has something to do with it, since the USPTO makes money on each trademarked phrase.) 

If the USPTO vigorously applied the basic rules of trademark laws against genericization even within the specific gray area realm of trademarked phrases, however, it would NOT allow the numerous violations we see every day. It would insist, for example, on the phrase "Coke brand cola adds life."  Bad advertising, but good trademark practice. The "purist" argument that would ban genericizing phrases is that such phrases deeply penetrate the public mind and quickly genericize products.  People commonly refer to "Big Macs" rather than to "Big Mac brand multi-layer hamburger sandwiches." We refer to "a two-liter bottle of Pepsi" rather than to "a two-liter bottle of Pepsi cola." These companies do not exactly bend over backwards to re-educate the public against genericizing their products (the way, say, Lego brand toys, Kleenex brand tissues, and Xerox brand copiers have done). The companies do enjoy the benefits of such genericization, however, and the pittance that is paid to the USPTO for each trademarked phrase is well worth the price. 

I have never found a single reference or resource that addresses or explains the above issues, and I have no formal training or expertise in this area, so this is all guesswork. But it strikes me that the USPTO could provide very clear guidance about proper TM use in a 2 or 3 page posting on their website. No doubt that would lower the income of a lot of trademark attorneys....

[JSonnabend]

Any use of a TM term as a noun, even if used solely for a particular product to distinguish it from another product in its class, will genericize the TM term and should invalidate it

No, that's wrong.  Your entire argument is based on a faulty premise.  There is no per se ban on using a trademark as a noun.  In fact, trademarks are nouns in proper use.  For example, an advertisement can say "try a Coke", meaning try a Coke brand drink.   You can walk into a store and ask for a "Coke", again meaning a Coke brand drink.  Even "enjoy a Coke" is fine, if you are referring to the branded product.

The problem arises when the brand name (i.e., the mark) is used to describe not the branded product, but instead generically to refer to the genus of the product.  Like asking for a "coke" for any cola.

If you search the forum for "nominative use" you will find some related discussions.

- Jeff

[PHInventor]

Listen, I would really hope you are right.  It would make my job a lot easier and allow me to market better. But here are just two references to the contrary (there are many more out there):

"Trademarks are adjectives that modify a generic noun. So, a mark needs to be used as an adjective and not as a noun."  - Ramsey Law Group, http://www.ramseylawgroup.com/viewarticle.php?id=21

"Trademarks and service marks are proper adjectives. Not nouns. Not verbs. A mark should always be used as an adjective qualifying a generic noun that defines the product or service." - International Trademark Association's Guide to Proper Trademark Use

[JSonnabend]

You are utterly misconstruing those statements.  A "Coke" is a thing.  It is a brand of cola.  So if you say a "Coke cola", then its, in some loose sense, and adjective.  But to order a Coke is fine as long as what you are asking for is a Coke brand cola.

The advertising world is replete with examples of such use ("Have a Coke and a smile" for example).  These uses are proper nominative uses of marks because they refer to the branded product by its brand name.

It's OK if you don't believe me.  I just want to make sure other readers of this thread don't come away with the idea that referring to a branded product by its brand name -- using the mark as a noun -- is somehow per se improper.

And one more point.  The U.S. Trademark Office does not award trademarks and they do not "enforce" trademark laws other than those concerning registration.  You might want to read up on the law instead of surmising what might or might not be the law.

- Jeff

[Kaitlin]

Jeff is quite right that there is no per se rule. 
Nevertheless, avoiding noun (i.e. nominative) and verb uses of a trademark is still a good rule of thumb to follow -- particularly for trademarks of new/unique products and processes. 

The reason for this is not that there is any statute or case law saying nominal (noun) or verbal use of a trademark makes it generic automatically by operation of law, but rather because of the mere fact that if a new product (or process involving the product) doesn't yet have a name, using the trademark for this function offers up the trademark to the public on a silver platter to use it as the generic term.  If you don't give them another workable term for the product, they're going to call anything that does what your product does by your trademark--whether or not you are the source.  That is to say, they will use it as the generic name.  And a critical mass of such use can make it generic and lose you your trademark rights in it.

(Manwich and Eggo are doing something risky in those ads, IMHO, but may have judged rightly that sandwich and waffle work perfectly well as generic terms for their goods.  My feeling is that there is a natural tension between trademark law and marketing -- marketing seeks to make the trademark a household name, but if they do that by making the trademark literally the only name people use for a kind of household product, then they've lost the branding function and with it the trademark.  It's a balancing act.)

[Kaitlin]

And just to add a bit of grammar quibbling...

The reason you can't use "table" in that manner is not because tables do not have power.  It's because "table" denotes a specific object, rather than indicating a fundamental substance with properties beyond an individual example of that substance.  For example, you can say "Experience the power of solar energy," or "Experience the solidity of rock."  But you can't say "Experience the flatness of table," even though tables are flat.

Actually, you can say "experience the flatness of the table", and if you used the word "table" to talk about tables in the abstract, you could say "experience the flatness of table".  Here, it's not a question of the word being a noun or not or having particular qualities associated with it, but rather of whether it is a concrete noun (using an article in front of it in English: e.g. a rock, the rock) or an abstract noun (which uses no article in English).  (Which, come to think of it, is probably what you were trying to say.)

In the phrase "Experience the solidity of rock" you are not speaking of a particular rock (concrete noun--a rock, the rock, this rock, that rock) but rather of rock as a an abstract noun for rock in general -- encompassing the essence of "rockness" if you will. 


What the advertisers are doing, in saying "experience the power of X", is in essence to turn the trademark X into an abstract noun for some sort of essence of their product which (presumably) encompasses a certain "power".   This use is so hackneyed at this point, however, that it smacks of marketing and would not likely risk turning the trademark into a generic abstract noun.  And, actually, in order to become a generic term for the product itself, it would probably need to be used as a concrete noun and not an abstract noun, in any event.  You're not actually selling the abstraction.

Enough philosophizing for now... go on about your business, nothing to see here folks!

[Isaac]

(Manwich and Eggo are doing something risky in those ads, IMHO, but may have judged rightly that sandwich and waffle work perfectly well as generic terms for their goods.

The context makes it pretty clear that Eggo and Manwich in the commercials don't refer generically to waffles and sloppy joes.  The danger is that the public may begin to misuse the trademarks unless those usages are policed.   Few mark holders police their mark more aggressively than does Coca-Cola. 

[Kaitlin]

The context makes it pretty clear that Eggo and Manwich in the commercials don't refer generically to waffles and sloppy joes.  The danger is that the public may begin to misuse the trademarks unless those usages are policed.   Few mark holders police their mark more aggressively than does Coca-Cola. 

Interesting point re "context", but I don't think "context" is really the operative term here if that means the context in the ad.  The context of "Leggo my eggo" is someone having a tug of war with the Eggo brand waffle, as I recall it, a context which definitely shows a nominative use of eggo to refer to the specific item being pulled.  And, if "context" is understood to mean the mere the fact that the term is used in an ad, that "context" won't protect any term from getting picked up for generic use.  Instead, I think the operative force here is the fact that there just isn't any great need for a new generic term for these products, and that's what keeps the use from being too risky. 

I could run an ad campaign saying "Buy Squirrel Springers, the new craze!" for my newly invented spring shoes for squirrels, but the fact that people can tell it's an ad won't keep them from using "springers" to describe any little spring shoes for the beasties if they don't already have a better generic term available.  I'd do much better to say "Buy Squirrel Springer brand hopping shoes!" 

But Isaac is quite correct that policing is important.  It is the trademark owner's job monitor usage of the mark not only to prevent infringement, but also to discourage the public from using a trademark as a shorthand generic term for the product sold under the mark.  (Think of the Xerox brand copier and the company's ad campaign: "You can't Xerox a Xerox on a Xerox.”)   

So if I see columnists talking about the new craze of using squirrel springers and how many brands of these are coming out, I should inform them that those others are just hopping shoes for squirrels and not "Squirrel Springers"


---------
Sorry I wasn't clear re the Eggo/Manwhich example.  I didn't mean to say that Eggo, e.g., would have become a generic term for waffle.  I was groping for a way to explain why that those ads, which violate the "don't use a trademark as a noun rule", could be a somewhat risky usage, but still not result in the public picking up on the use and making it into a generic term for that type of waffle.

Eggos, as I understand them, are always frozen, small and round.  So if small, round, frozen waffles were a really hot item the public clamored for, then "Eggo" theoretically might have fit the bill and become a generic term for that subset of waffle -- but not for waffles generally.  That is, if there were a public need for a word which meant "small round waffle", "eggo" would have been at risk to become that term.  But, as it happens, there wasn't such a need to distinguish small round waffles from the others and so the regular word "waffle" worked perfectly well and anyone wanting to describe a small round one would just use those descriptors with the broader term to cover the subset.

Same thing with "Manwich".  For the term to become generic there would have had to have been a need for a word to describe the type of sandwich a "Manwhich" is.  This would only work if 1) Manwich means as particular type/size of sandwich (which it is, as I gather from Isaac's reply, although I'm really much more familiar with waffles. ) and if 2) the public has a need for a word to describe that type of sandwich.  Otherwise, the broader generic term continues in use and the trademark term doesn't get used as a generic word for the subset.  If sloppy joe is indeed what a Manwhich is, then there is already a term in use for that subset.
Interesting thought, though...I wonder if Sloppy Joe was originally someone's trademark, before becoming a generic term.

[PHInventor]

I have a follow-up question about Squirrel Springers(TM) brand squirrel hopping shoes. 

Let's say that Squirrel Springers brand shoes proved to be so vastly superior to anything else in the squirrel hopping shoe category that people started referring to Squirrel Springers brand shoes themselves as "Squirrel Springers."

Furthermore, let's say you had a website as follows:

(Logo on upper left): SQUIRREL SPRINGERS
(Banner headline): Simply the best squirrel hopping shoes in the forest.

Would this treatment be seen as increasing or decreasing the risk of genericide?

[JSonnabend]

How else would people refer to Squirrel Springers brand shoes other than as Squirrel Springers?  That's what trademarks do, they identify a brand.  If people don't use the mark to identify a brand (i.e., a source), then there is no mark.

That is different from a situation where consumers refer to all squirrel hopping shoes as "squirrel springers".  If they do that, they are using the mark as the generic name of the product, and the mark risks going generic.

Consider a car buyer looking to buy a Ford Mustang.  As long as he is using the marks to refer to the specific brand of car, no problem, the mark is functioning properly.  If he says he wants a ford mustang meaning any sports car, let's say, then there's a problem.

- Jeff

[PHInventor]

That is different from a situation where consumers refer to all squirrel hopping shoes as "squirrel springers".  If they do that, they are using the mark as the generic name of the product, and the mark risks going generic.

Jeff, yes, that's exactly the risk I'm talking about. 

Let's say that other squirrel hopping shoes are all cheap, homemade, and perform poorly. All of a sudden, Kaitlin's manufactured Squirrel Springers are launched and because of their outstanding performance people start referring to all squirrel hopping shoes as Squirrel Springers (to the extent that even homemade squirrel hopping shoes are now referred to as "cheap homemade squirrel springers").  In this case, the company should studiously avoid making it sound as though Squirrel Springers are shoes rather than a shoe brand.

My question was whether, in the case of that kind of threatened genericide, it would be OK to feature a website with the Squirrel Springer logo, and then a tagline which says "the best squirrel hopping shoes on the planet."  Clearly it would be better to say "the best BRAND OF squirrel hopping shoes on the planet," but that phrasing would be frowned on by the folks in the marketing department.  Does the absence of the words "brand of" in the first tagline make it appear that "Squirrel Springers" refers to shoes, rather than a brand of shoes, and thus risk further genericization?