[kragen]

No, I've been interested in "intellectual property" restrictions since last millennium, so I've been familiar with the outlines of US trademark law for a while. You evidently are not. Aside from the reductions in scope resulting from laches and equitable estoppel, demonstrating a clear record of enforcement efforts is crucial to preventing genericization, which can befall even the most inherently distinctive marks such as "heroin".

Nowadays it can indeed be difficult to avoid getting taken in by LLM bullshit even if you don't ask an LLM yourself, but it is still possible.

https://simmonsattorney.com/generic-trademarks/

[jecel]

You are correct about the US in relation to trademarks. The situation there is rather complex, with it being possible for people to just add TM to their texts and ask other people to do the same and it is considered legally binding. They can take the extra step of registering and then they add (R) to their texts and that gets them an even stronger legal case.

Because of the case law nature of the US legal system and the informality of TM, if other people start using the term in other ways (for example using "xerox" as a verb meaning "copy") and you don't show an effort to curb that then you can lose your trademark.

In other countries things are different. Brazil, for example, uses a Latin legal system which is more formal. So the only thing that matters is whether you have registered the trademark with INPI (National Institute for Intellectual Property) or not. Which is why Gradiente owned the iPhone trademark in Brazil even though they were not using it anymore (it was from a product from around 2000) and if you asked anybody on the streets in Brazil they would associate the name with Apple.

[tialaramex]

It's all the usual suspects: Laches, Estoppel, and Genericisation. The first two lets deal with quickly: Laches only applies if you want to chase people for things they did too long ago, so, don't do that. Laches does not magically forbid suing them for things they are literally still doing, even if they've been doing them a long time, the prohibition is on unfair retrospective action.

Which gets us to estoppel. Estoppel requires explicit consent and isn't transferable. You won't get estopped from a trademark suit because the person who was misusing the mark thought they'd get away with it, that's completely contrary to how estoppel is used. If you give permission to someone to use your mark, then you're estopped from suing, but I didn't say "Give everybody permission" I merely said there's no need to sue or threaten to do so.

Genericisation is more interesting because in some sense it's true, your mark might become generic. This is generally a huge success (you don't become a household name if nobody has ever heard of your product...) but it's also extremely unlikely and both escape mention in this sort of piece. Indeed some marks listed aren't "generic" in the sense we meant here. If your mark is "genericised" as penalty for your country starting a global war, that's not going to be fixed by suing more people.

As you'd expect, the attorney assures you that you should pay them to help, even though they list absolutely no way in which they'd actually be able to help. How would you create a "clear record of enforcement"? Are you supposed to ensure that the correct number of people somehow infringe so that you can go after them? How many would be too many, or too few? How will courts measure?

The answer is it's nonsense. "Enforce it or lose it" claims are caused by the fact that lawyers would like you to give them money, - most of them will stop short of outright lying to get your money, but misleading is very much fair game when you're not even a paying customer yet.

Genericisation occurs when ~everybody uses your word to mean a thing. Are you going to sue everybody? Is an attorney going to help you, somehow, do that, some sort of reverse-class-action? No. They'll gladly take your money in exchange for the advice that in fact you shouldn't try to sue everybody.

In passing: The word heroin isn't "Inherently distinctive". It's barely distinct enough (remember this is a German manufacturer, so think German) to have made a reasonable trademark for Bayer's "non-addictive" morphine. Which is striking actually: Hey, who here has heard a story about a supposedly "non-addictive" opioid medicine sold by a huge pharmaceutical company who knew they were lying ?

The LLM stuff is because this wouldn't even be the second time I've had a thread where someone insists LLM told them about all these cases which proved me wrong. Previously in one HN thread they were so convinced they just pasted the made up case names wholesale.

[kragen]

Mostly I agree, and I'm sorry I went off on you like that. Cases like ConAgra v. Singleton take acquiescence further than simple laches. But acquiescence certainly didn't lose ConAgra their trademark in that case; it just allowed Singleton to keep using it as well, but only for some of his products.

"Heroin" is "inherently distinctive" in that it's a totally made-up word; it isn't a purely "generic" term like "Windows" or even a "descriptive" term like "Whole Foods". Even in German. The drug isn't literally extracted from heroes, it doesn't contain heroes, nothing like that. The reference here is to the spectrum of https://en.wikipedia.org/wiki/Trademark_distinctiveness. Even if most of the caselaw cited there is anachronistic in this case, many of the principles already existed at the time.

[tialaramex]

I see what you're saying on the distinctiveness though I think you're too generous to Bayer, this feels like how "Nutrisse" hair products are clearly intended to give customers the (false and indeed illegal if claimed) impression they're good for your hair. "Nutrisse" isn't a word but we do both see what the intent is right?

The Singleton thing is also a name problem, I think the court's sympathy ran out when there's re-use of branding material and evidence of actual confusion which is ultimately what these laws are trying to prevent.

[kragen]

Yeah, "Nutrisse" is clearly a defensible trademark, being all the way at the "fanciful/inherently distinctive" end of the distinctiveness spectrum.