What Happens When Trademarked Food Names Become Generic?

Posted on 12 Nov 2015 20:35

Trademarks serve as identifiers for brands. They may be a word, a phrase, or a symbol. Sometimes, even packaging can be trademarked, as for instance the shape of the old-style Coca-Cola glass bottle.

Trademarks are covered under the Lanham Act, which replaced earlier laws that were in effect since the 1800's. Before this, trademarks were covered under English and American common law (which still can protect trademarks, in some cases). This protected against unfair competition, primarily from counterfeit goods.

Many of the most iconic trademarks in the United States are the names of food products. You may already know that generic terms cannot be trademarked. For example, you cannot trademark the term sandwich. Likewise, you cannot trademark the term hamburger. Amazingly, the term cheeseburger is a trademarked term!

It may surprise you to know that many of the food terms that we use generically are, or once were, trademarked terms.

For example, we use the term TV dinner to refer to almost any pre-made frozen meal. However, TV Dinner is a trademarked term by Swanson, the makers of the first frozen meals.

In some parts of the South, Coca-Cola or Coke is used generically to refer to any soda. If a trademarked food name becomes used generically because of widespread popular use, it is possible for a company to lose their trademark protection. This process of a trademark becoming generally recognized to represent a particular type of product, rather than the specific company's product that the trademark emanated from has been called genericide.

Some notable examples are the terms shredded wheat and thermos.

Shredded Wheat Trademark

Shredded wheat may seem like a term that was generic from the beginning. However, when The National Biscuit Company, now Nabisco, trademarked the term to describe its pillow-shaped biscuits of "shredded wheat" it had no competition. There was no other product like it at the time since the process of manufacturing the cereal was covered by patents.

Once the patents expired, Kellog's started making its own version of wheat-biscuit cereal and began using shredded wheat to describe it. By the time National Biscuit Company filed suit against Kellog's, the term was in such general use that the company was unable to prove that the public primarily associated the name with its product, rather than with any such product. Therefore, National Biscuit lost its trademark protection for shredded wheat. It is questionable whether the term would have been deemed to be generic if it had been questioned from the outset.

Thermos Trademark

The case of Thermos was a bit different. We know a thermos, today, as any insulted bottle used to keep beverages warm or cold. The term has also extended to other related insulated containers used to keep foods warm.

Originally, the term thermos was a completely made up name to refer to the insulated bottles made by the King-Seeley Thermos Co., taken from the Greek word therme for hot.

The generic names for such bottles were names like vacuum insulated bottle, or vacuum flask, etc. When Aladdin Industries announced its intentions to call its vacuum-insulated bottles "thermos bottles" King-Seeley filed suit against this infringement on their trademark. The court held that thermos had become a generic descriptive word in teh English language, and was a well-established synonym for vacuum insulated container.

The difference between this case and the shredded wheat case is that the court held that King-Seeley had pretty much brought this upon themselves because they had for years themselves used the term in a generic way. They used the term thermos bottle in a way that was descriptive of the product, rather than its origin. They did not include any of the generic terms then in use as additional descriptors.

Although the company did try to police other manufacturers from using the term thermos in a descriptive sense, it did not become aware of the many generic uses of the term in publication and other places. Basically, the company had failed to identify Thermos as a trademarked term to the general public, causing it to fall into general use, and resulting in the company failing to protect its trademark when competition from Aladdin arose.

Victim of Your Own Success?

Both of the above cases of genericide could be seen as the companies being a victim of their own success. Being the first one to make or successfully market a product on a large enough scale that your trademarked name becomes a generic term might seem inevitable. However, it is lack of foresight, as well. A company must be very careful to prevent such genericide in its own use of the term and in policing its use by other companies.

Coca-Cola was unable to protect the term "cola" from becoming a generic term. However, regardless of the fact the company is so successful that Coke or Coca-Cola is sometimes use as a generic term for soda, cola, or soft-drink, there is no danger that Coca-Cola will ever lose its trademark on its name, as the company has from the beginning been careful to prevent such generic usage from becoming too entrenched. The company even fought against the shortened name Coke being used for Coca-Cola, in the beginning, for fear of such generification and to fight against imitators.

There are some easy examples, outside the food industry, of trademarks that are in danger of genericide.

XEROX company, makers of copiers, has always been afraid that its mark would become generic because we say things like 'I'm going to XEROX a copy for you.' The company has been very careful to make sure this doesn't happen. They spend a great deal of money on such efforts. You will never see a Xerox advertisement that says 'Buy a XEROX for your office.' The company always makes it clear that Xerox is a brand name by saying "XEROX® brand copiers…'

Other examples of marks that are in danger of are Kleenex, Google, Photoshop (ADOBE® PHOTOSHOP®). These are all, however, active and enforced trademarks. Just because a trademark is sometimes used in a generic way does not mean has lost its status as a valid mark.

Lite Beer Trademark

Today Lite beer is a generic term. Lite is nothing more than an alternative colloquial spelling of light. The first lite beer was marketed in 1967 by Meister Brau, Inc. They successfully registered three labels containing the name LITE, for their beer with no available carbohydrates.

Meister Brau sold its interest in the LITE trademarks to Miller Brewing Company in 1972, who expanded its use of the mark with reduced calorie beers, and used an amended label with the word LITE printed rather than in script for this new beer. In the next three years, the company expanded its sales of lite beer dramatically.

In 1975 other brewers, such as G. Heileman Brewing Company started making reduced calorie beers and called them "light beers." Miller filed trademark infringement suits against competitors like Heilman and Schlitz, to keep them from using the word light.

The courts ultimately ruled against Miller. Was this a case of genericide?

The court held that the term light and its phonetic equivalent "lite" were generic or common descriptive words. So, not only did Miller fail to prevent other companies from using the common word light to describe their beers but lost its right to use the term Lite as a trademarked term. Many sources hold that the term "lite beer" became generic through usage, but this is incorrect. This is not a case of genericide, as a colloquial alternative spelling of a very common everyday word, according to the courts, is generic from the beginning.

The question is, then, did the public ever associate the term lite, use by Miller, as meaning anything other than "light beer" and therefore another way of saying "low-calorie beer?" In these types of cases, it is the public's use and understanding of a term that will drive decisions as to the distinctiveness of the term.

Zatarain's Fish-Fri and Chick-Fri Trademarks

Another case that could be compared is Zatarain's Inc. Versus Oak Grove Smokehouse. Zatarain's had trademarked the terms "FISH-FRI" and "CHICK-FRI" for its seasoned corn-meal batter mixes for fish and chicken, since 1962, having used the names since 1950.

Of course, as you can imagine, there were other products on the market using the names "FISH FRY" or "CHICKEN FRY." But when Oak Grove Smokehouse, Inc.'s products "Fish Fry" and "Chicken Fry" coating mixes came on the market, Zatarains tried to stop them from using these terms.

There were also two other defendants named, Visko's and Boochelle's Spice Company.

Zatarain's successfully settled with Boochelle's Spice Co., causing them to change the name of their seasoned coating mix from "Fish Fry" to "Fish and Vegetable Fry." The remaining defendants, Oak Grove and Visko's, filed counterclaims for cancellation of the marks. Unlike the above case of lite beer, the decisions, in this case, were a bit different.

As mentioned, it is the public's understanding and use of a term that drives decisions as to use of trademarks. Clearly, the term fish-fri is simply a respelling of fish fry, and is, therefore, a general descriptor of how the product is to be used. Oak Grove and Visko's had every right to use the term fish fry on their products.

However, trademarks can be upheld for specific geographic reasons or locations. The court held that the term "FISH-FRI" had acquired a secondary meaning in the minds of consumers in the New Orleans area. So, in that region, the term was entitled to trademark protection. The court decided differently for "Chick-Fri," however, finding that it had not acquired a secondary meaning, and was a descriptive term only.

So, the decision, basically, was that Oak Grove and Visko's had not infringed on Zatarain's Fish-Fri trademark but that Zatarain's trademark was entitled to protection in the New Orleans area. The court decided that the trademark for the term Chik-Fri should be canceled.

So, as we see, even a term that would normally be seen as a generic descriptor (whether an alternative spelling is used or not) can become less generic if consumers generally perceive it as identifying a place of origin (i.e. the specific product made by a company), rather than a general term for all such products only. This can be specific to a region, or national, as the case may be.

Bundt Cake Trademark

Some may argue that a generic term is a generic term whether it has always been generic or whether it has acquired a generic meaning. Therefore, a generic term can never be trademarked regardless of secondary meanings that it may have acquired.

However, section two of the Lanham Act sets down conditions applicable to these questions, as to whether a trademark is registrable:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

(e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive … of them….
(f) Except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce.

In other words, it is possible for a mark to become distinctive, regardless of how generic it is, and therefore it is possible for said mark to be registrable as a trademark.

The trademark case of the term "Bundt" for a type of cake mix provides an interesting example of when a victim of genericide in which the victim tried to prove a distinctive secondary meaning failed to do so.

We use the term bundt pan and bundt cake generically for a type of cake pan and a type of cake baked in this pan. However, the term BUNDT for a fluted and scalloped ring-shaped tube pan is trademarked by Northland Aluminum, makers of NordicWare.

According to Wikipedia, the Bundt cake derives in part from a European brioche-like cake called Gugelhupf which was particularly popular among Jewish communities in parts of Germany, Austria, and Poland.[1] In the north of Germany, Gugelhupf is traditionally known as Bundkuchen (German pronunciation: [ˈbʊntkuːxn]), a name formed by joining the two words Kuchen (cake) and Bund.

It is not entirely clear what the word bund was supposed to mean, but it is claimed that when H. David Dalsquist and brother, owners of Nordic Ware, started making fluted and scalloped ring pans for making these types of cakes, a "t" was added to the word bund to form Bundt.

There is a Danish word bundt and it does mean bundle. Since Dalquist was modifying existing Scandinavian designs to make his aluminum version of the forms, it seems questionable whether he had a need to make up a new word.

These pans barely sold at first, probably because the American public was not generally aware of such cakes. It wasn't until 1963 that sales of the pans took off, owing to publicity from a Bundt cake submitted to the Pillsbury Bake-Off by Ella Helfrich, called "Tunnel of Fudge." Pillsbury received numerous requests for Bundt pans, and soon the pans were selling by the thousands.

In 1972, Northland Aluminum licensed the use of the word Bundt for a ring cake mix to Pillsbury and filed for a trademark on the use of the word Bunkt for such a cake mix.

The trademark examiner asked the company whether Bundt was a foreign word and Northland responded that they were unaware of any particular meaning of the word and that the only use of the term, for over twenty years, was to identify its pans, exclusively.

The examiner found cookbook recipes and newspaper articles referring to bundt cake or bundt style cake and found that the name "hardly functions as a mark which is capable of distinguishing applicant's goods."

Northland amended its application, saying that, without giving up any rights it may have built up, it had no intention of trying to claim exclusive rights to the word bundt as a type of cake made from scratch. In other words, the company disclaimed any rights to the term used to describe a finished cake, if such usage existed.

But, said Northland, the term Bundt was unknown to most Americans, except as used to describe its pans or in connection with cake mix packages. They were trying to prove that bundt was not a descriptive name for a type of cake. The company even asserted that the term was only really known by homemakers with training in German Jewish cooking, which constituted no more than 2.8 percent of the U.S. population.

The trademark application examiner responded that while it was possible that a secondary meaning may have been acquired, it didn't matter, as the term was generic enough that it could not ever be trademarked.

This decision by the examiner was clearly at odds with the actual law. It WAS possible for a secondary meaning to be sufficient to rescue a generic term. However, the U.S Court of Appeals found that Northland's assertions could not be upheld and that the term was certainly in widespread general usage being used to refer to a type of cake.

The question then is, did the public generally identify the word Bundt with Pillsbury's cake mix more than it identified the word as a general descriptive term for a type of cake? Northland tried to prove that this was indeed the case and submitted affidavits by three food professionals stating that they recognized the term Bundt as being a trademark for these type of ring-shaped pans. They also said that they recognized the term Bundt as a widely-known and recognized brand name for the Pillsbury cake mix.

Northland also submitted a consumer survey, claiming that "75% to 84% of the homemakers questioned expressed an awareness of Pillsbury's BUNDT brand ring cake mix."

This is a very good example of the type of proof insufficient to prove distinctiveness or secondary meaning, something that is very difficult to prove in all cases. The three food professionals were not recognized by the court as being representative of the general public, and the survey evidence showed that up to 25% of consumers would have recognized Bundt as a type of cake rather than as the Pillsbury cake mix.

Northland was unable to make its case for Bundt having acquired a distinctive secondary meaning as a particular cake mix made by Pillsbury.

An interesting side-note that comes out of this case is that the word "Bundt" does not seem to be original to Nordic Ware, as most sources assume. That is, the story that a "t" was added to the word bund to invent the word bundt may not be true. It seems that the word bundt may have been used in America at least 20 years before the Dalquists started making their pans.

The trademark examiner, having searched for instances of the word bundt used to describe cakes, found plenty of evidence of its use. In particular, the examiner cited the 1930 edition of The Settlement Cook Book which he said contained two recipes for Bundt Kuchen. Recall the German word Bundkuchen from the Wikipedia explanation given above.

The Settlement Cookbook was originally entitled "The Way to a Man's Heart" and was published by the Milwaukee Settlement House in 1903, with German Jewish recipes compiled by Simon Kander and Henry Scoenfeld./ The recipes for bundt cake using the term Bundt Kuchen appear to have been used in the original edition, although I cannot be sure. They were used as early as 1915, though.

There are actually three recipes, Bundt Kuchen No. 1 and 2, and "Baking Powder Bundt Kuchen." The first two are doughs made from butter and yeast, which is more traditional for these types of cakes.

Bundt Kuchen No. 2 refers to a Bundt form and describes it as a "heavy round fluted pan with tube in center." The Baking Powder Bundt Kuchen recipe again calls for a bundt form, this time describing it as "a deep round fancy cake pan with tube in center." These are not the only recipes in the book where a bundt form is called for, however.

It is not entirely clear at all, then, that the word bundt used in regards to a type of cake or a type of cake form did not already exist as a generic term when Dalquist made his first pans. The story of the "t" being added to bund is widely recounted. It is even claimed that Dalquist added the T to differentiate the name from a pro-Hitler German-American from the 1930s called "the Bund." IT is possible that he invented the word independently of its being used in the past to denote a cake and a cake form, but it is also possible that this story was made up to lend further credence to the distinctiveness of the name as a trademark, since the trademark would be easier to defend on the grounds it was "misspelled" or "misused" foreign word that had no real meaning.

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