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28 Cardozo L. Rev. 1789 (2006-2007)
Confronting the Genericism Conundrum

handle is hein.journals/cdozo28 and id is 1805 raw text is: CONFRONTING THE GENERICISM CONUNDRUMt Deven R. Desai* Sandra L. Rierson* INTRODUCTION Do you Yahoo!? Did you Google someone or something today? Use a Kleenex? If so, how did you understand the terms Yahoo!, Google, or Kleenex? Did they mean a general experience or product or did they signify a specific product or service? Maybe the significance depended on the context in which you used the term. If you were buying tissue, you may have meant specifically Kleenex,' or you may have used the term to mean any tissue, or you may have meant the term to be both. That is, you may have thought, I need Kleenex (substituting the term for tissue), reached the aisle with tissues, and then discerned between Kleenex tissue and its competitors because at that point-the commercial point-the brand2 mattered to you. Insofar as you used any of the terms in a general way to indicate a product or service class rather than a specific product or service, trademark holders would be quite upset because such uses may lead to a finding that the trademark has become generic. Once a term is deemed t This article has benefited from the encouragement and feedback of David Barnes, Barton Beebe, Tom Bell, Irene Calboli, Stacey Dogan, Rochelle Dreyfuss, Brett Frischmann, Mark Lemley, and Shaun Martin. We also received helpful comments from the participants in the IP Scholars August 2005 conference hosted by Benjamin N. Cardozo School of Law and the participants in the 2005 Works-in-Progress Intellectual Property Colloquium co-hosted by Washington University School of Law and Saint Louis University School of Law. We are also indebted to Chelsea Hueth and Aimee McLeod for their invaluable research assistance. Assistant Professor, Thomas Jefferson School of Law. * Assistant Professor, Thomas Jefferson School of Law. Note that, when using Microsoft Word, typing kleenex with a lower case k causes the autocorrect function to capitalize the word to signify that it is a proper noun. 2 The terms trademark, mark, and brand are used interchangeably throughout this Article. Although almost anything may function as a trademark (e.g., color, smell, sound), this Article focuses on word marks and the way they function as part of language. See, e.g., Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) (holding that the green and gold color of dry cleaning press pads was a protectable trademark); Id. at 162 (noting the registration of NBC's three chimes as a trademark); In re Clarke, 17 U.S.P.Q. 2d (BMA) 1238, 1240 (T.T.A.B. 1990) (allowing registration of plumeria blossom-fragranced thread); In re Gen. Elec. Broadcasting Co., Inc., 199 U.S.P.Q. (BMA) 560, 563 (T.T.A.B. 1978) (ringing made by ship's bell clock registrable with acquired distinctiveness). 1789

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