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Incomplete trademark policing can lead to a perilous result

The legal obligation of policing a mark is what a trademark owner likes least. After all, a trademark owner undertakes considerable costs in developing a mark, advertising and promoting it so that the mark has commercial success for the goods and/or services with which it is used. When a mark becomes very successful, there is a greater chance of it being used as the name of the product itself, such as escalator, aspirin, cellophane, and Pilates. Policing efforts must be complete in order to protect the mark. If they are incomplete, then a trademark owner could face a situation similar to what happened with the THERMOS trademark in the US.

In The American Thermos Products Company v. Aladdin Industries, Incorporated, 207 F.Supp. 9 (D.Conn. 1962), aff'd. sub nom King-Seeley Thermos Co. v. Aladdin Industries, Incorporated, 321 F.2d 577 (2nd Cir. 1963), the effects of incomplete policing are amply demonstrated. In 1907, US use of THERMOS as a trademark for vacuum bottles commenced. During 1907-1923, the trademark owner conducted an educational program to popularize "Thermos bottle" and used "Thermos" for vacuum-insulated products. However, the generic terms "vacuum-insulated bottle", "vacuum jacketed bottle" or "vacuum bottle" were not used with the THERMOS mark. The program succeeded, so that "Thermos" became a household name for a vacuum bottle. The owner approved such generic use of "thermos" in publications and by the general public. The owner also repeatedly used "thermos" per se in its catalogues, in the same size and typestyle of the words surrounding it. However, the owner required those in the trade to use "Thermos" as an adjective modifying "vacuum bottle" or the other generic terms for the product.

During the early twenties, the trademark owner sued another for infringement of the THERMOS mark. In American Thermos Bottle Co. v. W. T. Grant Co., 279 F. 151, 152 (D. Mass. 1922), aff'd. 282 F 426 (1st Cir. 1922), the court questioned the validity of the THERMOS mark. Immediately after this decision, the trademark owner began advertising and using on product labels THERMOS with "vacuum bottle" and "vacuum jug", etc. However, the owner continued with usage of "Thermos" per se in its catalogues and product descriptions without indicating the term is a trademark. When incidents of generic usage appeared in trade journals, advertising and publication releases by those in the trade, which the owner learned of through a clipping service it began to use in 1935 or through others, it notified such advertisers and members of the trade about Thermos being a trademark, and requested correct use of the term as a mark. The owner's requests were generally satisfied.

The owner did not investigate nor attempt to police other uses of "Thermos" as a generic term. Generic use thus proliferated in newspapers, magazines, books, dictionaries, and treatises, all of which the owner could have discovered had it effectively policed its mark. Instead, during 1923 to 1952, the owner sent a few dozen letters to those in the public who used the mark generically when such uses were brought to its attention, when many hundreds of such generic uses existed.

Aware of the widespread generic use of "Thermos", during the period of 1952-1957, the owner changed its name from "The American Thermos Bottle Company" to "The American Thermos Products Company", to inform the public the company offered products other than vacuum bottles. Further, the owner developed a plan to offer products that were not vacuum-insulated nor accessories for vacuum-insulated products.

From 1958 through 1962, the owner began manufacturing and selling THERMOS-branded tents, firelighters, camp stoves, lanterns, swivel-seat shell boxes, bottle openers, and cap catchers. Prior to this period, the only other products offered by the owner were accessories for vacuum bottles, such as lunch kits, lunch boxes, pail and kits, and trays and cups.

In 1957, the owner increased its policing efforts against generic uses of "thermos" in the trade and in editorial works, literary works and non-trade publications. In 1959 it employed the services of a clipping bureau to aid its efforts in policing against misuses in editorials, literary works and non-trade publications. The increased policing was done in an effort to stanch the trend of generic uses and to reclaim the word from the public domain.

The owner's efforts to police beyond the trade were too late and were viewed by the court as a failure of due diligence. American Thermos Products Company, supra, 207 F.Supp at 13. The court found THERMOS "has become a generic descriptive word in the English language as used in the United States" Id. at 14, and not protectable against generic use by the public. To jobbers, retailers and others in the trade, however, THERMOS was still a trademark.

The result? A mixed one. While the court found that THERMOS was not a generic term in the trade, it was a generic term to the public. The court thus fashioned relief whereby the defendant could use its house mark preceding "thermos" (i.e., all in lower case letters) with some restrictions ( which subsequently were lessened in King-Seeley Thermos Co. v. Aladdin Industries, Inc., 320 F.Supp. 1156 (D.Conn. 1970)).

An appeal was to no avail for the trademark owner. The appellate court stated:

We are not convinced that the trade mark's loss of distinctiveness was the result of some failure on plaintiff's part.

Substantial efforts to preserve the trademark significance of the word were made by plaintiff, especially with respect to members of the trade. However, there was little they could do to prevent the public from using "thermos" in a generic rather than a trademark sense. And whether the appropriation by the public was due to highly successful educational and advertising campaigns or to lack of diligence in policing or not is of no consequence; the fact is that the word "thermos" had entered the public domain beyond recall. Even as early as 1910 plaintiff itself asserted that 'Thermos had become a household word".

The clear lesson from the Thermos case is that policing must be complete, or an owner may find a competitor is able to use its mark.