May 23, 2004

Trademarks as Adjectives?

trademarks

Geoff Pullum is right to point out the absurdity of trademark attorneys' fetish about always using a trademark as an adjective ("Oreo cookies" rather than "Oreos"). I've run into this notion several times in the course of preparing expert opinions in trademark cases, when attorneys have questioned my descriptions of marks as nouns or noun phrases.

But it isn't quite accurate to say as Geoff does that "The enemy [the attorneys] are laying defenses against is the danger that a trademark might fall into the public domain." This has rather to do with the distinction between  terms that apply to the attributes of a certain product or service, which are protectable, and "generic" terms that merely name the class of things of which a  particular  product or service is  an instance, which are not protectable. So you can register the name "Tru-Fit sports shoes," for example, but not "sports shoes" itself.

The line between the two is not always clear, particularly when the mark is descriptive of some unique property of the goods or services it's associated with, which is why companies are careful in trademark applications to describe their brands under descriptions that make the generic term explicit, as in "DISTANCE-COMMANDER brand remote control devices," and the like. (The upper-case letters are used in something analogous to the way they were used by Katz and Fodor, by way of suggesting that an expression is somehow detached from its ordinary English meaning.)

Where the lawyers go wrong is in associating genericness with nominal meanings, and assuming that if you use the mark only as an adjective (or more accurately, as Geoff points out, as an attributive modifier), you will have secured yourself against a competitor's claim that your mark is generic, and hence not protectable.

But of course companies do in fact routinely use their marks as  nouns, and indeed, sometimes as verbs. Scott Paper Company ran an ad for Viva paper towels some years ago that showed people using the product to clean various objects and persons against a jingle that ran, "Viva the this, Viva the that, Viva the Chris, Viva the catů" and so on.  Juniper Networks is currently running a television campaign with the slogan "Juniper your net." And "googling" and other verbal forms occur a number of times on Google's own Web site. Those would be rightly described as proper verbs, at least in the sense of "proper" that's relevant to describing nouns like Chevrolet, if not the semanticist's sense of having a unique denotation.

Posted by Geoff Nunberg at May 23, 2004 05:41 PM