This decree (a reversal of multiple previous decisions by the U.S. Patent and Trademark Office) may also come as news to tech writers and editors who have abused their “thumb drives” in just the past two weeks, according to my casual check.
Trek 2000 International, the proud trademark holder, began selling ThumbDrives in 2000 and applied for a trademark in 2007, which was initially then repeatedly refused because the trademark office ruled the term “thumb drive” to be generic. The company’s law firm says in its triumphant press release: “Fearing that its highly-valuable ThumbDrive™ trademark would go the way of other unique and famous marks that became generic and lost all their value—such as aspirin, e-mail, zipper and escalator—Trek engaged in a lengthy legal battle to avoid this fate.” … And prevailed on Nov. 30.
The appeals board was persuaded by the fact that other USB flash drive makers are already respecting ThumbDrive™ as a trademark and competing in the marketplace despite not using that term as a generic. They also cited Trek’s successful efforts to get a few media outlets to stop using thumb drive generically. As for the (apparent) fact that the typical person would consider thumb drive a generic, the board said that alone, even if demonstrable, wouldn’t be enough to strip Trek of its trademark rights.
They also noted that it isn’t Trek’s fault that “a 24-hour news cycle and 24/7 online global activity (mean) many trademarks are misused repeatedly, perhaps, in part, because there is less time for editing and reflection before news reports or blog posts are released.”
It’s always the media’s fault.
I asked Corynne McSherry, intellectual property director at the Electronic Frontier Foundation, for her take on the matter, and while she stressed that she had yet to read the board’s decision, “it does seem surprising.”
As for Trek’s trademark protection task going forward, McSherry offers that it may prove challenging but is by no means impossible. “A trademark owner is obligated to police use of its mark, though not to the extent supposed by some markowners. Trademark owners often have the notion that they must shut down every use of their mark—(however) as this case shows, it is much harder to ‘lose’ a mark than is commonly supposed. … In this case, however, Trek will probably police vigorously, to avoid future ‘genericide.’ I think you are correct that it won’t be easy. In the past, other companies have approached similar problems (e.g. Band-Aid, Xerox) by mounting large-scale ad campaigns.”
Years ago I received a letter from Wham-O, the toy maker, reminding me that Frisbee is a registered trademark and noting I had erred by publishing the word without capitalization. Never did I make that mistake again, in large part because Wham-O reinforced its message by including with its letter the coolest Frisbee I had ever flung.
The ThumbDrive™ folks can consider that tale a bit of free advice.