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*
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).


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