A yo-yo by any other name….
I had never intended to follow up with another trademark post so soon, but I received some comments to the prior post that behoove me to do just that! Today, the topic is genericide and, as I said in a Facebook post last month, “no, that’s not a typo.”
What would a yo-yo be called if not a yo-yo? Have you ever wondered if there’s a generic name for the toy (like tissues for Kleenex® brand tissues)? The name “yo-yo” was first trademarked in 1932, and at one time it was called a pocket disk toy. Probably most, and possibly none, of my readers would ever remember that name, however. Yo-yo’s have been yo-yo’s for most of our collective lives. As such, shortly after the introduction of the Duncan Butterfly (remember those?) in 1962 and a major television campaign by Donald Duncan, Royal Tops Company sued in federal court stating (and the court agreed on appeal) that yo-yo had become a part of common speech and Duncan no longer had exclusive rights to the term.
The long and short of it is this: the name yo-yo fell subject to genericide. In other words, the trademark “died” because the word became part of the general lexicon as a description for the thing, not the brand. Hence the need for major brands to police their marks and make sure that we don’t refer to the PROPER NAME without the COMMON NAME included.
So that means it’s an Original Slinky Walking Spring Toy or a Band-Aid Brand Adhesive Bandage. Not the shorter, generic forms we often hear in common parlance. Hearing one’s brand name used universally is music to any brand-makers ears, but not their lawyers….
I assume that over half (maybe 99%?) of my readers here today will ignore this advice. Further, those of us who do try to follow it will fail from time to time. In fact, as I was reading up on my facts for this article, I came across an established webpage on branding that referred to “putting a band-aid” on something, as a manner of speech and without any disclaimers. Nonetheless, I am hereby informing you that’s a no-no (not a yo-yo) - even if the short-form references are clearly in jest - as I was advised yesterday by two very senior trademark folks. (One also added that there is no use playing games, as trademark attorneys do not have a sense of humor. So sad for me, but we do need to know the rules of the sandboxes we are playing in.)
Anyway, now you know how to keep out of trouble, with the trademark gods, at least. If you would like to know some more genericized, former marks that we can happily refer to directly, click here. And if my future posts look a bit awkward and wordy from time to time, now you’ll know why. (Or maybe from time to time I’m just not an eloquent writer. No, that can’t possibly be it.)
Alright, readers. My work here is done for today. Let’s see if more comments come. Tomorrow is another day!
Law Office of Anne Marie Segal provides legal counsel to businesses and individuals. Please visit www.amscounsel.com for more information. None of the information posted on this site constitutes legal advice or forms an attorney-client relationship. This is a public forum. Please do not post confidential or fact-specific information regarding your legal questions on this site.
Note: Additional information about genericide and trademarks can be found on the International Trademark Association’s website or in their enclosed PowerPoint presentation (click here) entitled Funeral for a Brand: How Trademarks Become Generic.