Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.
October 2008 Issue
Unregistrable
A Zip in Time?
The threat of genericness often stalks the unique brand name that has come to define a product or service category. Today, trademark-savvy brand owners from Apple® to eBay® have crafted an array of legal and marketing strategies to keep genericness at bay. So while names like Kleenex® and Formica®, and more recently, Google®, may have flirted with the genericness abyss, seldom does a modern brand icon suffer the ultimate trademark penalty—loss of brand status and entry into the lexicon as a common noun.
It was not always so.
As one memorable print campaign by Xerox® illustrated, the "graveyard" of trademarks is populated by once-proud and singular brand names that lapsed into common descriptive use and lost their power to identify source, e.g., names like "aspirin," "cellophane," and "escalator." Perhaps no word is more emblematic of this existential trademark paradox or more enigmatic than "zipper." That word is so entrenched as the generic name of the object it identifies—and so devoid of any other modern synonyms—that even those who know that "zipper" once was a trademark do not realize that the product's original generic name was "hookless slide fastener." Yet that is what the zipper's inventor, Otto Frederick Gideon Sundback, christened his discovery back in the early 1900s.
Like many trademark lawyers, I had assumed that the item's manufacturers had coined the "zipper" name, and had lost it in a court battle that resulted in a declaration of genericness. The story of the birth of the brand name "ZIPPER" and its descent into genericness is perhaps less dramatic, but no less remarkable.
According to the book Zipper: An Exploration in Novelty, Sundback's invention was a model of ingenuity and technical achievement, but remained largely a novelty item until the B.F. Goodrich company placed a small order in 1922. A brainstorming B.F. Goodrich engineer had recognized that the "hookless slide fastener's" snug closure would revolutionize rubber galoshes by making them water-tight. When B.F. Goodrich incorporated the new fastener into its "Mystik" brand boots, consumers reacted by snapping up more pairs than Sundback's company, Talon, could churn out hookless slide fasteners for.
With this commercial success came a change of name for B.F. Goodrich's new hit product. As recorded in a Talon company report:
"[B.F. Goodrich] changed the name of the shoe from the Mystik Boot to the Zipper, said name having been suggested by the president, who, on being presented with a pair of shoes fitted with the Hookless, showed boundless enthusiasm."
Robert Friedel, Zipper: An Exploration in Novelty 148 (1994) (quoting from Talon Company Memo).
In coining the catchy "ZIPPER" brand name–a flash of marketing genius rivaling Sundback's engineering feat–B.F. Goodrich should have enjoyed a trademark for the ages. But it was not to be. So fitting was the onomatopoeia "zipper" to Sundback's revolutionary invention that the public simply stopped calling the device a "hookless slide fastener." As historian Robert Friedel writes, "If there was ever a term predestined to be appropriated by the public for its own uses, the 'zipper' was it." Id. at 149.
By the late 1920s, the demand for "ZIPPER" brand boots had waned, but the term "zipper" had survived with a new primary meaning, given a second life by a public that plainly preferred the snappy "zipper" over the tedious and awkward phrase "hookless slide fastener." The trademark rights went down without a fight. No legal miscues by the trademark owner, no pitched courtroom battle, not even widespread generic misuse by rival manufacturers.
Perhaps B.F. Goodrich should have recognized the enormous value of the distinctive brand name it had created. Or perhaps Talon should have seized the opportunity to acquire the trademark rights when sales of B.F. Goodrich's "Zipper" boots began to flag. Then, like the makers of Kleenex® brand tissues and of Formica® countertops, the iconic "Zipper" trademark might have given them enough marketplace clout to stave off the competitive assault from Japanese zipper giant YKK–the company that eventually surpassed Talon to become "lord of the fly." But as the adage goes: "Of all words of mouth and pen, the saddest are these, 'it might have been.'"
Unregistrable
A Zip in Time?
The threat of genericness often stalks the unique brand name that has come to define a product or service category. Today, trademark-savvy brand owners from Apple® to eBay® have crafted an array of legal and marketing strategies to keep genericness at bay. So while names like Kleenex® and Formica®, and more recently, Google®, may have flirted with the genericness abyss, seldom does a modern brand icon suffer the ultimate trademark penalty—loss of brand status and entry into the lexicon as a common noun.
It was not always so.
As one memorable print campaign by Xerox® illustrated, the "graveyard" of trademarks is populated by once-proud and singular brand names that lapsed into common descriptive use and lost their power to identify source, e.g., names like "aspirin," "cellophane," and "escalator." Perhaps no word is more emblematic of this existential trademark paradox or more enigmatic than "zipper." That word is so entrenched as the generic name of the object it identifies—and so devoid of any other modern synonyms—that even those who know that "zipper" once was a trademark do not realize that the product's original generic name was "hookless slide fastener." Yet that is what the zipper's inventor, Otto Frederick Gideon Sundback, christened his discovery back in the early 1900s.
Like many trademark lawyers, I had assumed that the item's manufacturers had coined the "zipper" name, and had lost it in a court battle that resulted in a declaration of genericness. The story of the birth of the brand name "ZIPPER" and its descent into genericness is perhaps less dramatic, but no less remarkable.
According to the book Zipper: An Exploration in Novelty, Sundback's invention was a model of ingenuity and technical achievement, but remained largely a novelty item until the B.F. Goodrich company placed a small order in 1922. A brainstorming B.F. Goodrich engineer had recognized that the "hookless slide fastener's" snug closure would revolutionize rubber galoshes by making them water-tight. When B.F. Goodrich incorporated the new fastener into its "Mystik" brand boots, consumers reacted by snapping up more pairs than Sundback's company, Talon, could churn out hookless slide fasteners for.
With this commercial success came a change of name for B.F. Goodrich's new hit product. As recorded in a Talon company report:
"[B.F. Goodrich] changed the name of the shoe from the Mystik Boot to the Zipper, said name having been suggested by the president, who, on being presented with a pair of shoes fitted with the Hookless, showed boundless enthusiasm."
Robert Friedel, Zipper: An Exploration in Novelty 148 (1994) (quoting from Talon Company Memo).
In coining the catchy "ZIPPER" brand name–a flash of marketing genius rivaling Sundback's engineering feat–B.F. Goodrich should have enjoyed a trademark for the ages. But it was not to be. So fitting was the onomatopoeia "zipper" to Sundback's revolutionary invention that the public simply stopped calling the device a "hookless slide fastener." As historian Robert Friedel writes, "If there was ever a term predestined to be appropriated by the public for its own uses, the 'zipper' was it." Id. at 149.
By the late 1920s, the demand for "ZIPPER" brand boots had waned, but the term "zipper" had survived with a new primary meaning, given a second life by a public that plainly preferred the snappy "zipper" over the tedious and awkward phrase "hookless slide fastener." The trademark rights went down without a fight. No legal miscues by the trademark owner, no pitched courtroom battle, not even widespread generic misuse by rival manufacturers.
Perhaps B.F. Goodrich should have recognized the enormous value of the distinctive brand name it had created. Or perhaps Talon should have seized the opportunity to acquire the trademark rights when sales of B.F. Goodrich's "Zipper" boots began to flag. Then, like the makers of Kleenex® brand tissues and of Formica® countertops, the iconic "Zipper" trademark might have given them enough marketplace clout to stave off the competitive assault from Japanese zipper giant YKK–the company that eventually surpassed Talon to become "lord of the fly." But as the adage goes: "Of all words of mouth and pen, the saddest are these, 'it might have been.'"
