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[Teresa Stirling]

 I'm in the process of producing a radio ad that refers to a sweater as being "so desperate housewife." Does anyone know if that breaks any rules?

Thanks in advance for your help.
Teresa

[JSonnabend]

That's a tricky question.  Assuming that the product is not branded as a "Desperate Housewives" product, you're likely ok on the straight-forward tm infringement analysis.

If the advertisement in its totality would reasonably lead consumers to believe that your product is affiliated with or endorsed by the "Desperate Housewives" show, then you might run into trouble.

Short of either of the two issues above raising their ugly heads, you should be ok.  

That said, the foregoing is general guidance and not specific advice.  It might make sense to have an attorney review your specific ads and do some legal research to help you better understand your risks going forward.

- Jeff

[Teresa]

Thanks for your help!

Teresa

[cls]

Jeff,

  Above the legalities of fair use of someones trademark, doesn't this also fall under using someone elses trademark as a generic term? I have been taught never to use a trademark in a form other than as its proper noun. What's your opinion on this? I know it's not per se a legal issue, but more of a respect of the rights of trademarks etc. That being said, if you were on the legal team for "Desperate Housewives," would this be an instance where you might mail out a letter to the advertiser asking for your trademark to not be used genericly?

   Thanks!

[JSonnabend]

How would the proposed use be generic?  Doesn't it refer to the television show?

- Jeff

[cls]

Sorry, error in my post:

I have been taught never to use a trademark in a form other than as its proper noun.

Should have read as
"... use a trademark in a form other than as an adjective followed by its common noun."

IE: I take TYLENOL acetaminophen for my headaches . NOT: I take tylenol for my headaches.

  "That sweater is so Desperate Housewives!"

  As to generic use, aren't you using it in a descriptive form? Aren't you using it as generically as an adjective like "funny" or "large," instead of as an adjective describing the common (or generic) noun (a tv show in this case)? Didn't aspirin become generic in the US because of something like this?

  Thanks, Matt.

[Lyza]

Hi Matt,

I know you are a student of IP and are really trying to understand U.S. laws, but what are you talking about?  How is it that you think "Desperate Housewives" qualifies as a generic mark?

[Dave_Zan]

While I'm not an attorney, perhaps this might help. But
please accept my apologies if I end up confusing you all
the more instead.

I remark you're head and shoulders because I consider
you being above people. But is the phrase "head and
shoulders" generic for a brand of shampoo?

Only time I can possibly consider desperate housewives
being used in its generic sense is if I'm referring to a set
of housewives desperate to get their husbands' money.

In short, it's not a question of whether a term is generic
or what. It's a question of how it's intended to be used.

It's unfortunate some people think just because a word
or phrase is commonly used it should be generic in every[/i]
sense of it. Parties who use such terms or phrases for
their respective goods and services strongly disagree,
especially if they've consistently used them for such for
a long, long time.

[JSonnabend]

IE: I take TYLENOL acetaminophen for my headaches . NOT: I take tylenol for my headaches.

As my torts professor said long ago, you shouldn't turn off your brain just because you're studying law (or something like that).

There's absolutely nothing wrong with saying "I take Tylenol for my headaches" -- indeed, I'm sure McNeil Consumer Healthcare would love it if you told that to everyone -- provided that you're referring to Tylenol brand acetaminophen.  Nothing wrong with ordering a Coke, as long as the waitress brings you a Coke and not a Pepsi.

The quote from the OP, in my reading, was referring to the TV show.  There's nothing wrong with referring to a TV show by it's name, at least not from the point of genericness.  After all, referring to a branded product by its brand name is what a trademark is all about, isn't it?

- Jeff