King-Seeley Thermos Co. v. Aladdin Industries, Incorporated
138 U.S.P.Q. (BNA) 349, 1963 U.S. App. LEXIS 4660, 321 F.2d 577 (1963)
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Rule of Law:
A registered trademark becomes a generic term, losing its protected status, when its primary significance to the consuming public is to identify the class or nature of a product rather than its source or origin.
Facts:
- From 1907, the American Thermos Bottle Company (King-Seeley's predecessor) manufactured and sold vacuum-insulated containers under the trademark 'Thermos'.
- Between 1907 and 1923, the company's advertising and educational campaigns promoted the product as the 'Thermos bottle,' effectively making the trademark the name of the product itself without using a generic descriptor like 'vacuum-insulated'.
- Around 1923, after a court opinion suggested 'Thermos' might be descriptive, the company began using the word with generic terms and policing its use within the trade.
- Despite these efforts, the company failed to take significant action against the widespread generic use of 'thermos' by the general public and in non-trade publications.
- Over several decades, the public increasingly used 'thermos' as a common noun synonymous with 'vacuum-insulated container'.
- Starting in the mid-1950s, King-Seeley intensified its efforts to educate the public on the trademark significance of 'Thermos', but by then, the generic use was deeply embedded in the language.
- Aladdin Industries, Incorporated, a competitor, announced its intention to sell its own vacuum-insulated containers and describe them as 'thermos bottles'.
Procedural Posture:
- King-Seeley Thermos Co. sued Aladdin Industries, Incorporated in the United States District Court, seeking an injunction to prevent threatened trademark infringement.
- Aladdin answered and filed a counterclaim, asking the court to cancel King-Seeley's 'Thermos' registrations, arguing the term had become generic.
- The district court (trial court) held that the trademarks were valid but that 'thermos' had become a generic word in the English language.
- The district court issued a limited injunction that permitted Aladdin to use the word 'thermos' under certain conditions (e.g., in lower-case and preceded by 'Aladdin's').
- King-Seeley (appellant) appealed the trial court's decision to the United States Court of Appeals for the Second Circuit, challenging the finding that 'thermos' had become generic.
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Issue:
Has the registered trademark 'Thermos' become a generic term for vacuum-insulated containers, thereby entitling a competitor to use the word in connection with its own products?
Opinions:
Majority - Moore, J.
Yes. The trademark 'Thermos' has become a generic term because its primary significance to the public is its indication of the nature of the article, rather than an indication of its source. The court found that regardless of King-Seeley's efforts to protect its mark, the word had entered the public domain beyond recall due to widespread public usage. Citing the 'Aspirin' and 'Cellophane' cases, the court reasoned that the critical test is what buyers understand by the word; if they understand it to mean a kind of product, the trademark has become generic. Survey evidence showed that 75% of adults referred to such containers as a 'thermos,' while only a small minority recognized its trademark significance. Therefore, while King-Seeley retains rights to its specific stylized 'Thermos' logos, Aladdin is permitted to use the lower-case word 'thermos' descriptively, provided it is preceded by the possessive form of 'Aladdin's' to minimize consumer confusion.
Analysis:
This case is a landmark decision in the doctrine of trademark 'genericide,' where a trademark loses its legal protection by becoming the common or generic name for a type of product. The court solidified the 'primary significance' test, which focuses on the perception of the consuming public rather than the owner's intent or efforts to police the mark. This ruling serves as a cautionary tale for companies with highly successful products, demonstrating that a trademark can become 'too successful' and fall into the public domain. The remedy crafted by the court—allowing limited, descriptive use by competitors under specific guidelines—has become a model for balancing the interests of the original trademark holder, competitors, and the public in similar cases.
