Genericide! AKA, the death of a trademark

Genericide? Yes, you read that right. This blog post is a about death. The death of IP... The death of IP by becoming generic.

It's a terrible fate for any entity that owns a mark. Only those that reach the peak of their success actually suffer from it because the brands are so widespread. Marks lose their significant connection to one specific good or service, and are applied across the board to all similar products. 

Imagine the marketing team that creates a branding strategy so well, they actually destroy themselves. 

It's not common, but it has happened enough times throughout the history of the US Trademark Office to be a recognizable risk. It is almost unique to word marks, particularly nouns. Let's look at a few of the most notable cases.

Escalators

It's true, escalator was once a word mark. Over 100 years ago, Charles Seeberger purchased patents for a moving stairway from inventor George Wheeler. Seeberger made a deal with the still today well-known elevator manufacturer, Otis, and coined the term "Escalator". On May 19, 1900, Escalator was registered as a trademark, no. 34,724. This model of the moving stairway was a central attraction at the 1900 Paris World's Fair. Soon, it was in department stores and large gathering places, changing how people used space. In particular, the escalator changed the shopping experience. 

However, by 1950, escalator was no longer used just for the one product. The public and Otis itself were commonly using it in a generic sense. The word mark no longer specifically represented the Otis model. Haughton Elevator Company brought the case to the Commissioner of Patents and the Examiner of Trade-Marks. On April 3, 1950, escalator was cancelled. Read the legal decision here.

Cellophane

Du Pont purchased US patent rights for the Swiss-invented cellophane and swiftly the new Du Pont Cellophane Company applied for a trademark for the cellulose wrapping, first known as "La Cellophane". Just plain "Cellophane" was registered July 22, 1924, no. 186,577. In the meantime, Du Pont discovered it was not impermeable to moisture. A new formula was patented in 1927.

Record of the Du Pont Cellophane mark in the Official Gazette

Yet only a short 12 years after registration, the Waxed Products Company objected to the Cellophane word mark. Evidently it had become ubiquitous when referring to transparent plastic wraps, and could no longer be justified as a trademark. Du Pont continued to manufacture the product, discontinuing it after a 62 year run once other, superior products supplanted its use. Read about Du Pont's history here.

Aspirin 

If you're anything like me (cheap, OK? I admit it.), when you peruse a pharmacy's pain relief aisle, you're accustomed to deliberately selecting those with generic names: ibuprofen, acetaminophen, naproxen sodium, etc. However, there's one exception, and that's aspirin. It was trademarked as far back as 1899 by Bayer AG, but lasted only slightly longer than Cellophane.

Of course, this one is only slightly a case of genericide. Things get confusing around 1917-1918; there are many conflicting timelines for events. Many of Bayer's assets were seized during World War I, and that included patents and trademarks. Debates over using Bayer's Aspirin in government legislative bodies in Australia, the US, and others who opposed Germany focused on problems with governments purchasing a German product. The seizure of IP may have been related.

By the time Bayer would be able to re-register a mark for aspirin, it was already too widely used by companies selling a specific pain reliever with the same acetylsalicylic acid formula.

Dry Ice

Labs and chemists had been producing dry ice for decades before a company dedicated to it was founded, in no small part because there was no known practical use for solid carbon dioxide. Nonetheless, the DryIce Corporation of America had their word mark registered on July 14, 1925, no. 200,934. A few years earlier a patent for the process to make dry ice had been obtained, so the company was founded with something of a hopeful attitude.

Record of the DryIce application for trademark in the Official Gazette

The DryIce corporation had a pretty good run for a few years after uses for the solid carbon dioxide were found--largely in shipping cold products like frozen foods--but fell prey to a too-successful mark. In 1932, the DryIce Corporation of America lost to Louisiana Dry Ice Corporation, and the term "dry ice" just became a generic phrase to indicate anyone's solid carbon dioxide. 

Another mark was registered in July 1926 and included design elements, and had slightly greater longevity. It was re-registered in the 60s before later expiring.

A word and design trademark for the DryIce product.

Today, most entities are very careful with their branded names and marks, seeking to avoid the fates of the examples above. Genericide is more well-known. You may have noticed that all of the examples above were taken from the first half of the 20th century. 

I hope our trip through the trademark graveyard was fun! Leave a comment if you think there are others that deserve a shout out, or if there's a mark you suspect will suffer genericide soon.

I'm a Barbie Girl, in an IP World

Alright, let's hop on this Barbie bandwagon. Better late than never.

For those who might not know, Barbie has a lot of IP. Like, a truly impressive amount in multiple categories. Patents? Yep. Trademarks? Huge check. Copyright? You know it. Trade secrets? One can only assume.

That means this blog post will have to choose some small portion... We've looked at patents for most of the summer, so let's investigate the evolution of one of Barbie's trademarks.

A trademark for the name/designation Barbie, as applied to a doll, was first issued in 1964. It's been renewed multiple times since then, most recently in 2014. The first registration number was 0068905.

The TSDR record for the original Barbie mark

Of course, this does not include any specific text colors or appearance; that came later. The semi-cursive, pink script (that you're hopefully imagining) first appeared in the 1990s, much later than I thought. The registration certificate for mark no. 2110856 doesn't show it, but the mark is for white script on a pink background "and is lined for the color pink". Unfortunately, documentation available from the TSDR does not include more than the registration certificate, so no specimen or official color drawing is available to show here.

The image from reg. no. 2110856 certificate

According to the application, it was first used in 1992 for dolls, doll clothing and doll accessories. Mark no. 2110856 was registered in November, 1997 and cancelled in August of 2004. Evidently, it was cancelled because "registrant did not file an acceptable declaration under Section 8". This refers to Section 8 of the U.S. Code regulating trademarks. No documentation on the cancellation is available via TSDR, so further research would be required to learn more about the context.

There were several Barbie script marks submitted for registration in the 90s; two are still live, each renewed within the last ten years. Registration nos. 2087842 and 2639971 were filed in 1996 and 1998, and granted registration in 1997 and 2002 (both sets of dates respectively). 

Specimen image accompanying reg. no. 2087842

You've likely noticed 2087842 was filed around the same time as the cancelled 2110856; it is also used for the same goods (dolls, doll clothing and doll accessories). Color is not specified in the mark description.

2639971, however, is lined for pink like 2110856, but the goods associated are clothes, costumes, athletic wear, and other garments.

"Barbie" uses the trademarked script protected by reg. no. 2639971. But did Barbie really dump Ken?

Another dead mark, registration no. 2635578, has script similar to 2110856, without the lined cloud-shaped background or specified colors. Filed in 1997, it was registered in 2002, and cancelled in 2009. The associated goods were bath products and cosmetics intended for little girls.

Certificate image of the script for cancelled mark no. 2635578

In 2008, Mattel filed for another Barbie script mark, no color specified, again for goods that included dolls, their clothes and accessories, as well as several other types of toys and playthings. Registered in 2010, no. 3737763 was cancelled in 2016, once more under Section 8. To read the details on that, visit the TSDR page.

Certificate image of the script for cancelled mark no. 3737763

Finally, Mattel applied for one more Barbie script mark in 2021, published July 11, 2023. Serial no. 90509941 doesn't claim a specific color, but the goods associated are, unsurprisingly, dolls and toy figures. It is no stretch of the imagination to guess that this slightly altered script intentionally matches the style from the Barbie movie. 

Look familiar?

Just looking at the Barbie scripts should provide some indication of the amount of marks and other IP owned by Mattel for Barbie. Hundreds of word marks were sorted through to find this short list of specific scripts. The Barbie IP Empire is massive and generates billions in income.

BONUS: The first Barbie patent was not for the doll's design, but mostly for its construction that allowed it stand upright with the help of pins. Barbie was originally created with feet that couldn't support the doll. Evidently that's changed, but it was after I stopped regularly encountering them. 

"If my feet were shaped like this, I'd never wear heels!"

Trademark -- Expedited Cancellation Pilot Program

The Trademark Trial and Appeal Board has started a pilot program for cancellation proceedings involving claims of abandonment and/or nonuse. Consider participating – it could save you time and money compared to a traditional cancellation proceeding.

The pilot program will explore a faster, more cost-effective way to remove unused or abandoned registrations from the Trademark Register.