You could have knocked me over with a memory stick when word arrived here a few days ago that the government's Trademark Trial and Appeal Board has ruled "thumb drive" is not a generic term and therefore ThumbDriveTM is worthy of trademark protection.
This decree - a reversal of multiple previous decisions by the U.S. Patent and Trademark Office -- may also come as news to writers and editors at PCWorld, CNET, PCMag.com, ZDNet, LifeHacker, Wired and Engadget, all of whom have abused their "thumb drives" in just the past 10 days.
As a result of this November 30, 2010 ruling, Trek alone is able to sell these ubiquitous flash drives in the United States under the ThumbDriveTM brand.
Henn Tan, Trek's Chief Executive Officer, coined the mark ThumbDriveTM in 2000 in connection with Trek's pioneering invention of the USB flash drive. Trek applied for US registration of its ThumbDriveTM trademark on the principal register of the USPTO in 2007; however, the Trademark Office refused to register ThumbDriveTM, arguing the mark was "generic." Fearing that its highly-valuable ThumbDriveTM 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.
Now before someone suggests that the appeal board must have its thumb up its ... uh, must be mistaken, I have to admit that I gave its ruling a quick layman's read and came away convinced that this isn't as clear a case of an unwarranted trademark as it may seem to someone who had no idea that there even existed a brand of thumb drive called ThumbDriveTM (several of my colleagues, for example).
The board was persuaded by the fact that other USB flash drive makers are already respecting ThumbDriveTM 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.
Here's an excerpt from the ruling that places primary responsibility for thumb-drive-related trademark abuse squarely on the shoulders of two familiar villains: the media and the Internet itself.
We reiterate that the ultimate purpose behind the prohibition of registration of generic terms springs from a statute that regulates commerce - not the English language. By this decision, we are not undermining the well-established principle that the availability of other words for competitors to use does not, by itself, transform a generic term into registrable matter, but the complete absence of competitor use after ten years of these products being on the market tends to indicate that THUMBDRIVE has not fully entered the public domain.
Today, with a 24-hour news cycle and 24/7 online global activity, undoubtedly 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, and, in part, because what was the casual spoken word between people is now the written word posted to the world.
You can read the ruling here.
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 to 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 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 ThumbDriveTM folks can consider that tale a bit of free advice.