Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Tamar Duvdevani (New York)

Aspirin. Thermos. Escalator. Cellophane.  What do all of these items have in common?  If your answer is “objects that MacGyver needs to get out of a sticky situation,” you may be correct, but that is not what we were looking for.

Each of these commonplace, generic terms for the objects that they define were once valuable intellectual property before they lost protection through “genericide,” the  process by which trademark rights are diminished or lost as a result of overuse in the marketplace.  Genericide can happen in a variety of ways.  A trademark owner’s failure to police its mark, for example, can result in widespread use of the term by other sellers, thereby reducing the trademark’s ability to identify source.  In other instances, a term intended by the seller to be a trademark for its novel product is understood by the public to be a generic name because there is no other word in the vernacular to describe the product.  Both of these fates can be avoided by thoughtful branding strategies.

A recent example of an apparel trademark that some may argue has gone the way of zipper (a trademark once owned by B.F. Goodrich Company) is the onesie – or, as Gerber Childrenswear (“Gerber”) writes it, the Onesie®.  The term is pervasively used on the Internet to define one-piece, snap-bottom infant apparel, and the early Wikipedia entry for the moniker simply states, “A onesie or onesize is a kind of T-shirt designed to conceal a diaper when worn.”  

Yet a different picture has begun to emerge, thanks to Gerber’s apparent newfound interest in fighting for the registered trademark.  Wikipedia’s “onesie” page now redirects to “infant bodysuit” and contains a “Onesies Brand” section discussing the tension between Gerber and those in the marketplace that believe the mark has already become genericized.  This Fall, Gerber filed a lawsuit against sellers of children’s apparel using the brand name “oneZ,” and Internet blogs and comment boards are abuzz with various baby apparel retailers complaining about the cease and desist letters received for use of “onesie” on their sites.

While it remains to be seen if Gerber can avoid the genercizing trend and strengthen its arguably weakened trademark rights – much like the textbook examples of Xerox® and Kleenex® –trademark owners should bear in mind that fighting genericide is an expensive, time-consuming process that can be avoided.  Branding techniques like resisting the urge to use your trademark as a verb, distinguishing your written mark from other copy, and early policing will go a long way in maintaining your valuable, unique brand.