In the previous entry in this series, I discussed the narrow foundations of trademark law and its more recent expansion – in particular, how new approaches to trademark liability have departed from the law’s traditional focus on disputes about the source of competing goods. I continue that theme now by considering a tension that emerges from this expansion. Although trademark liability has expanded beyond source-identification, other aspects of trademark law have not, and these more traditional aspects can rise up and trap the unwary mark owner, or at least turn its expanded rights into expanded costs.

To understand the tension between the traditional roots of trademark and its recent expansion, one must understand how trademark rights can be lost. The most familiar scenario occurs when a trademark becomes so well-known that consumers adopt it as the generic term for the entire class of products, rather than using it as a source-identifier associated with one particular producer’s products. This is known as “genericide,” and when it happens the trademark owner loses all rights in the mark. (Marks that have suffered genericide in the past include thermos, escalator, and yo-yo, all of which began as trademarks. Potential victims going forward include KLEENEX, XEROX, and POST-IT.) [...]

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