ABSTRACT
This chapter is about how linguistic properties of trademarks can be used to help resolve, and help us understand, trademark disputes. Most trademarks are linguistic: words or phrases (“Gillette,” “What’s in your wallet?”). Images and even physical forms can also be trademarks (McDonald’s golden arches). Sometimes the issue in a trademark dispute is how similar sounding a new trademark is to an existing one. Phonetics and phonology can help. Lexical semantics can address how similar in meaning two competing trademarks are. Trademark fights can also be about whether a trademark has, as a paradoxical price of business success, become widely used to refer to a thing without reference to its corporate ownership, and to other similar products or services. Examples: “xerox,” “kleenex,” “band-aid,” “cellophane,” “frisbee.” This is known as “genericization”; the trademark has become a “generic” term. In Chapter three trademark cases are examined in which linguistic analysis, contributed by linguists, was crucial: (i) a fight over the competing trademarks for packaged food products “Healthy Choice” and “Health Selections”; (ii) a battle over the meaning of the “Mc-” prefix: did a new chain of inexpensive, basic motels whose corporate owner planned to call “McSleep” infringe on McDonald’s trademark? Put as a semantic question, had “Mc-” become freed from its association with McDonald’s and become generic?; and (iii) a dispute over whether “Google” had become generic, meaning, as a verb, “to search the internet” with no reference to the specific search engine Google, and if so, whether that meant that the name “Google,” a noun, had lost its protected trademark status.
