A successful trademark can provide more than just brand recognition or notoriety. In fact, Forbes reports that the 10 most valuable trademarks have a collective worth of over $300 billion. That figure is greater than the GDP of all but the 44 wealthiest countries in the world. Clearly that little ® can mean something, but as renowned economist Christopher Wallace notes, “more money regularly entails more problems.” Even the mere pursuit of the ® can melt the wings off soaring companies. Just ask popular photo-sharing pioneer Twitpic, which is abruptly closing up shop in the wake of Twitter—now with its own photo-sharing process—threatening to ban Twitpic if it to continued pursuing a trademark. Though trademarks chiefly convey pecuniary benefits, they can provide security beyond the financial realm, like when you attempt to prevent a porn company from releasing your alleged sex tape because it uses your trademarked stage name in its title.
But the struggle doesn’t stop once a company secures a trademark. Trademarks occasionally become so intertwined with a specific product that the trademark-protected brand name usurps the generic in everyday parlance. We all know that most people ask for a Band-Aid after suffering a freak Velcro accident, or Google tips on Photoshopping their latest Crockpot dinner before Tweeting it. All of those names are trademarked, but they’ve become so entrenched in our popular lexicon that using their generic names seems awkward and stilted. Who asks for cyanoacrylate adhesive when they just want some Superglue?
Companies experiencing the double-edged sword of such immense success actively—and often, aggressively—advertise in trade publications to stress the importance of not using trademarks to refer to generic products. Trademarks don’t enable their holders to completely dictate the approved usages of their brand names, though. Fair use principles allow journalists to employ trademarked names when referring to the actual trademarked products or companies, an idea accurately called “nominative fair use.” New Kids on the Block spurred the seminal nominative use case when they sued USA Today for running a story about the band including a reader poll. The 9th Circuit determined that journalists can employ a trademarked name referentially when identifying the product or service would prove too difficult in the absence of doing so, but only if the reference doesn’t suggest endorsement and only uses the trademark as necessary. Nominative fair use expanded the classic fair use principle, which prevented companies deriving trademarks from pre-existing words or objects—think Apple, for example—from fully appropriating the use of such terms. Despite classic fair use serving as the foundation for nominative fair use, it still retains its own grey areas, such as when yogurt companies and business ethics consulting companies have trademark clashes centered around the use of the word “how.”
The nominative fair use exception does not cover the apparently reckless brand dilution that blurring the trademarked-generic border entails, however. This means that we live in a world where a journalist might have to warn of the environmental dangers of extruded polystyrene foam, or the health hazards of cooking on high heat with pans coated in polytetrafluoroethylene, rather than potentially facing liability for using the trademarked names nearly everybody associates with these products (Styrofoam and Teflon, respectively). Perhaps this seems fair in usages that suggest a negative characteristic of a product, but trademark holders do not stop there. In one of the trade publication ads discussed above, Rollerblade, Inc. implores journalists to not refer to the generic act of inline skating by the company’s trademarked name. Is it fair to believe that the average consumer will mistakenly believe that any sort of inline skate will produce the same experience as a Rollerblade? Most of us understand that a company must protect the integrity of its brand and guard against its dilution and corruption, but do we really want this to force journalists to use outmoded generic terminology that seems artificial and pedantic? Unless companies complaining of this type of usage can show that it causes some sort of quantifiable damage to trademark value, it seems as though a more common sense approach to nominative fair use should emerge.
Vincent Cesare is a J.D. candidate, ’16, at the NYU School of Law.
