Trademark Genericide: Lessons As Close As Your Driveway

Published in the Intellectual Property Magazine

After a US removal firm won $62m in damages in a genericide case, McLane, Graf, Raulerson & Middleton's Beverly E Hjorth reviews how to build a strong brand

You may have seen one of those portable storage containers marked with the large letters 'PODS' in your neighbor's driveway, or perhaps you've used one yourself. The company known for these containers, PODS Enterprises, successfully fended off an allegation by U-Haul in the US, that the terms "pod" or "pods" have become the generic term for these moving and storage containers.1 PODS' experience offers some lessons in how to prevent what could be considered a descriptive mark from becoming generic and even how to create a stronger mark in the process.

PODS Enterprises' incontestable trademarks registrations

PODS Enterprises, founded in 1998, delivers large storage containers directly to its customers' locations, such as a home or office. The customer fills the container with items, and when the container is full, PODS returns and moves the container to a storage warehouse or to the customer's new location. PODS owns several US trademark registrations.2 Two registrations are for the mark 'PODS' in standard character format and two are in a design format that include the mark 'PODS' and the words "Portable On Demand Storage". The goods are "metal containers for the storage and transportation of goods" and "paper and cardboard packing boxes", and the services are "moving and storage services, namely, rental, storage, delivery and pick up of portable storage units". Interestingly, in 1999, PODS had obtained a US registration3 for the mark 'PODS' for its moving and storage services on the supplemental register. In the US, the supplemental register is provided for trademarks that are capable of acquiring distinctiveness, but have not yet done so. After about five years of use, PODS was able to obtain its registration for the mark 'PODS' on the principal register for these services.

Both of the registrations for 'PODS' in standard character format have become "incontestable". To gain incontestable status, PODS filed a declaration (known as a section 15 declaration after the relevant section of the Lanham Act,4 the US federal trademark statute) with the US Patent and Trademark Office stating that the registered marks had been in continuous use for the prior five consecutive years, there had been no final decision adverse to PODS' claim of ownership...