The Curious World of the Trademark
Millions of readers have been pleasured by the writings of John Steinbeck, but there was no joy in the Atlanta headquarters of the Coca-Cola Company when the Pulitzer-prize-winning novelist’s The Wayward Bus reached the executive suite.
”‘You rather have a coke?’ ” asked the traveling salesman who was trying to move in on the blonde at the bus stop lunchroom.
”‘No. Coffee’ ” she replied. ” ‘Cokes make me fat.’ ”
”‘Got any coke?’ ” another character asked.
”‘No,’ ” said the proprietor. ”‘Few bottles of Pepsi-Cola. Haven’t had any coke for a month. It’s the same stuff. You can’t tell them apart.’”
It was bad enough from the Coca-Cola point of view to violate the company’s famous trademark (which covers both Coca-Cola and Coke) by using the lower-case “c” instead of capitalizing the name. The error was compounded when Steinbeck also used the plural form. Such usages denigrate a trademark by implying that it is not unique but represents a class of goods. Then, to cap it all, there was that untoward comparison with Pepsi-Cola.
Nor could the General Foods Corporation have been any less distressed than the Coca-Cola management if its officers read the description in The Wayward Bus of what was on the third shelf behind the counter of the luncheonette. For there were stacked “individual boxes of … grapenuts, and other tortured cereals.” They caught the eye of Mr. Pritchard, a businessman and one of the passengers on the bus. After ordering breakfast for his wife and daughter, he said, ” ’I’ll have grapenuts and cream.… ’ ”
Grape-nuts is, of course, a historic, valuable, and diligently guarded trademark of General Foods. The risk it was exposed to by the wayward novelist is highlighted by a remark that Mrs. Pritchard made when she felt a headache coming on. ” ‘Elliott,’ ” she said to her husband, ” ‘see if they have any aspirins, will you?’ ” They did, and the woman behind the counter obligingly tore a “cellophane bag” off a display card and handed it to the indisposed lady.
What is at issue here, then, is that Coca-Cola, Coke, and Grapenuts must be capitalized and handled carefully with respect to property rights, while it is perfectly correct to lower-case aspirin and cellophaneto which may be added zipper, thermos, linoleum, mimeograph, yoyo, and literally scores of other once-proud names that have slipped into the English language and have become merely the common description of a whole category of products but no lonsrer of any particular one.
The story of this fall from grace begins with the legal character of a trademark and a glance at social and economic history. A trademark is, quite simply, a mark of somebody’s trade. It is defined today in U.S. statutory law as including “any word, name, symbol, or device, or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.” The mark is an indication of origin, of quality, or at least of uniformity, and often carries the suggestion of inherent characteristics that may give the product an edge in the marketplace. For example, Halo, the name of a shampoo, conveys the pleasant idea of soft highlights in the hair; Talon suggests that a particular slide fastener will do well what it is supposed to do in gripping and holding.
“Brand” or “brand name” are colloquial terms often used as synonyms for “trademark,” but “trade name” means something quite different. A trade name is the name of the maker, not of the product. General Motors Corporation is a trade name, Cadillac a trademark. Jell-0 is a trademark, but General Poods, owner of the Jell-0 mark, is a trade name. Most trade names would not pass the trademark examiner at the Patent Office as being registrable. But there are exceptions. Johnson & Johnson is both a trade name and a trademark, and the “Celanese” portion of Celanese Corporation is a trademark.
Trademark protection, since it provides the legal basis for fending off unfair competition, is a valuable right. Without it, our modern industrial society would be in chaos and the consumer at the mercy of a host of con men. The encroachment is called infringement and was well defined by Judge Augustus N. Hand in 1952. When a manufacturer of children’s shoes and related items introduced the mark Gro Pals after R. H. Macy & Co., Inc., the big New York department store, had long used the marks Gro-Shoe and Gro-Sock, the U.S. Court of Appeals granted Macy’s an injunction stopping the sale of Gro Pals. In delivering the court’s opinion Judge Hand said, “Infringement is based on the existence of similarity such as would cause confusion of any appreciable number of ordinarily prudent purchasers as to the source of the goods,” and he added that it was hard to avoid the conclusion that “there was a deliberate purpose to obtain some advantage from the trade which Macy had built up.”
Infringement can be stopped even if there is no intention to confuse the purchaser and even if the products of the two firms are not competitive, provided, in the latter case, that the newcomer is clearly trying to borrow the advertising and good will of the trademark owner. It would be folly, for instance, for a manufacturer to come out with a Kodak bicycle.
It is small wonder, then, that the statistics of trademark registrations are impressive. The total issued in the United States alone stands at 1,067,920, with about half a million marks on the active register. In 1976, the last year for which figures are available, 40,117 applications were filed and 29,208 registrations issued.
Distinctive marks as indicia of ownership appear in the famous cave paintings of southwestern Europe, where cattle are shown with brand marks on their flanks, and pottery four thousand years old has been found around the Mediterranean littoral with the maker’s emblem on the handle. In the Middle Ages merchant marks were placed upon pewter, cloth, gold and silver articles, even baker’s bread, not as a right of the seller but as a liability imposed upon the merchant or guild to protect the buyer against fraud. Justice could be summary. In the Palatinate in the fourteenth century an innkeeper was hanged for passing off cheap wine as R’fcdesheimer.
It was recognized that the marks were of prime economic importance to the maker or seller, and many fanciful house marks incorporating animals, hearts, seals, Christian symbols, initials, and cyphers came to be used by rich merchants as a kind of bourgeois heraldry, then evolved into coats of arms when the traders became gentlemen. Some of these symbols of trade may still be seen in the brasses and stained-glass windows of ancient colleges, abbeys, and cathedrals of England and Europe.
But it was not until producer and consumer were no longer in close contact, that is to say, not until about the middle of the nineteenth century when mass production and distribution of consumer goods made a merchandising shortcut imperativethat the use and true value of trademarks were fully appreciated, although trademark protection in England was first enacted into law in 1783. In the United States a statute providing for the registration of marks was passed in 1870 and revised in 1876, but was struck down three years later by the Supreme Court as being unconstitutional. A new law was enacted in 1881, replaced by others in 1905,1920, and 1946. Under them, trademarks assumed their modern function as a form of “commercial magnetism,” in Justice Felix Frankfurter’s phrase, to draw customers to the article or commodity upon which the “congenial symbol” appears.
Today famous brand names are part of the American vernacular. We know them, too, by their visual images. They are like old friends: Leo, the MGM lion, White Rock’s Psyche, the bearded Smith Brothers of cough-drop fame, American Telephone and Telegraph’s bell, Prudential’s Rock of Gibraltar, and Planters’ Mr. Peanut, that vivacious, swaggering, top-hatted figure that jaunty boulevardier with monocle and cane who, because of the whirligig of national politics, now enjoys the prestige of association with the White House. Goobers are so definitely “in” that an enterprising entrepreneur of Plains, Georgia, began peddling bottles of peanut soil for five dollars, and peanut soup became the soupe du jour every Wednesday at Washington’s luxury hotel, the Sheraton-Carlton.
A trademark may be a coined word (Kleenex), a family name (Schlitz), the mark of a service (Greyhound); it may even be suggestive, provided it is not descriptive (Coppertone). The suggestive mark hints fancifully of a desirable characteristic of the product but does not describe it: a “Mallard” raincoat reminds one of how a duck sheds water. The idea for a trademark may come from almost anywhere—from a scientific survey, an employee contest, a “think tank,” a brainstorming session, an encyclopedia, a sudden inspiration. A computer came up with the name for the world’s largest oil company-Exxon. The double x is especially helpful since it is a combination found only in the Maltese language and a few English surnames.
“You need a name,” said a paper-box manufacturer in a meeting with executives of a baking company many years ago when packaged, trademarked, nationally advertised food products were still a novelty in this country.
“You needa… Uneeda Biscuit!” Henry N. McKinney, an advertising man who had already christened Keds, Karo, and Meadow Gold Butter, is credited with saying. Thus suddenly a historic brand name came into existence.
Or take, as another example, the case of a small company in St. Paul whose principal product was sandpaper. In 1925 little Minnesota Mining and Manufacturing (3M) addressed itself to a big problem of the Detroit automobile giants. Two-tone body finishes were the hot news in car styling, made possible by the invention of quick-drying lacquers and automatic spray guns. But the automobile factories could not get a sharp edge where the colors met.
Something was needed that would stick and hold, seal off paint solvents, yet come off easily. It seemed that 3M had the answer a two-inch-wide masking tape backed, along both edges, with a narrow strip of adhesive. The adhesive was only a quarter of an inch wide. This appealed to the 3M management because it lowered production costs to omit the stickum on the middle part of the tape. One edge of the tape was applied to the car body, the other gripped the masking paper. But the tape failed to hold. A wrathy foreman of a paint shop turned on a 3M salesman and said: “Take this tape back to your stingy Scotch bosses and tell them to put more adhesive on it.”
The home office got the point, corrected the error, and someone with a sense of humor bestowed the name Scotch brand on the tape. Thus the Scotch concept, strengthened by a tartan design, became a valuable trademark suggesting satisfaction and economy, and has since been applied to hundreds of the products of this high-technology company.
Some marks, which incorporate words like “Royal,” “Premier,” “Black and White,” or “Star,” are rated as “weak” because they are common descriptive adjectives and so other companies may appropriate them in other fields without incurring any legal liability whatsoever. Castle & Cooke, one of the famous “five companies” of Hawaii, sold macadamia nuts under the brand name “Royal Hawaiian” and claimed infringement when another corporation applied for registration of the same term for a line of liqueurs. But the Patent Office rejected the argument. It ruled that there was no reasonable likelihood that purchasers would get confused between Royal Hawaiian liqueurs and Royal Hawaiian nuts, so the liquor company was entitled to register the trademark for its own field of products.
Other marks are rated as “strong” because they are distinctive, original, fanciful, and set the product apart from all others. Aunt Jemima is one of these, but the classic example is Kodak. The name was thought up by George Eastman to identify his cameras and camera supplies. Philologically the word is meaningless—and startlingly abrupt. “Bitten off by consonants at both ends,” one trademark historian has written, “it snaps like a ‘Kodak’ shutter.”
Whether they are strong or weak, all trademarks must be watched over and policed because of a paradox. They can be too successful, in that their very success may lead ultimately to their demise. This occurs when a brand name becomes so completely connected in the public mind with a whole class of articles—whether it be cosmetics, cereals, vacuum cleaners, chewing gum, or whatever—that the purchaser regards it as being the name of the type of product, not of a specific one. At that point, which is usually determined by a court test, exclusiveness can slip away entirely and the legal rights in the brand name are destroyed forever. When the owner of a trademark lets down the guard to that extent, Dorothy Fey, executive director of the United States Trademark Association, calls the result “Genericide.”
Some precautions for protecting a mark from becoming generic are:
The name should be capitalized. If it is written in lower case, the name should be enclosed by quotation marks.
Since a trademark is a proper adjective, it should, wherever possible, be followed by the common name (noun) of the product, as in Band-Aid brand adhesive bandages or Pyrex brand glassware . There are occasional exceptions, as when the consumer understands beyond the shadow of a doubt. A Buick is a Buick. Nor does Procter & Gamble need to say that Tide is a detergent in every printed advertisement.
If the trademark is registered, all printed matter should make that fact clear. There are several acceptable ways of doing this, the shortest and simplest being the association of the trademark with a capital R in a circle: ®. Danger signals are the use of the possessive, “nouning,” “verbing,” and the appearance of the plural. “Please don’t use our name in vain. Use it the way the good law intended,” the Xerox Corporation pleads; and when former Senator Sam J. Ervin, Jr., chairman of the Watergate investigating committee, spoke casually of “xeroxing” some material during the televised hearings, he received a courteous but educative letter from the Xerox people on trademark grammar.
Many firms have standard letters ready to be sent when necessary to writers, the distributors that handle their merchandise, the general public, and lexicographers, thanking them politely for their interest in the product but chiding them for sinning against the law of trademarks. Company executives are precise in speaking, careful in writing even the most informal internal office communications. They issue instruction pamphlets and schedule special advertising campaigns in publications read by editors and journalists. “ Only Dow makes Styrofoam brand insulation and buoyancy billets!” the Dow Chemical Company pointed out in an advertisement. “Please, hit that capital S when typing Styrofoam or mark it UC [upper case] on proofs.… Thank you.”
The ghostly presence of shredded wheat, lanolin, celluloid, dry ice, and milk of magnesia haunts marketing men and makes compulsive dictionary-watchers of corporate executives who may read and ponder when they find Frigidaire and Jell-0 in the American Heritage Dictionary carefully capitalized and defined as trademarks, while cellophane, which took twelve years of time plus untold sums of money and great toil to win its place in the sun after being introduced from France, languishes in lower-case ignominy as just a type of wrapping material made from wood pulp. Common property. A household word. Both the Frenchman who invented cellophane, and du Pont de Nemours and Company, which bought the U.S. rights to manufacture it, constantly and inexplicably used the coined name in a descriptive sense; the company, for one thing, used the name as referring to a class of cellulose products, not a unique brand emanating from du Pont. (It was the same mistake that the Otis Elevator Company made when in its advertising it used the trademark “Escalator” in conjunction with the common word “elevator.”)
And so, when du Pont challenged a competitor in court for filling orders for cellophane, it lost. The word, freed of all ties, went into the English language. Sic transit gloria mundi in the world of business when the proprietary trade term of a careless owner gets too popular.