Examples

The principal trademark of Germany’s Bayer Pharmaceuticals uses the name of one of its founders configured as a cross placed within an aspirin-shaped circle with a distinctive two-toned circumference. It is a strong mark because the name “Bayer” alone does not describe or suggest pharmaceuticals, but consumers, through Bayer’s many years of use of the mark, have come to associate it with this company’s pharmaceuticals. 

Aspirin, perhaps Bayer’s best-known product, was once a company trademark for its acetylsalicylic acid pain reliever. Over time Bayer Aspirin so saturated the U.S. market that consumers associated the trademark with all acetylsalicylic acid pain relievers, regardless of their manufacturers. And so, “Aspirin” once a strong fanciful trademark became a generic term for acetylsalicylic acid pain relievers and suffered demotion from a proper adjective (Aspirin acetylsalicylic acid pain reliever) into a common noun: aspirin.  

In 2004 Hisamitsu, a major pharmaceutical company headquartered in Tokyo, obtained a U.S. trademark registration for the sound of these four pitches sung to the syllables of the name of the company: Hi-sa-mi-tsu. Below is an audio file of the end of a Hisamitsu television ad for a topical therapeutic, punctuated by the aural trademark.

Given that the sung syllables are included in the visual and aural marks that were submitted with the trademark application, presumably Hisamitsu would obtain protection for its use in commerce of a particular four-pitch sequence only if they were sung to the syllables of the company’s name.   

Allergan obtained a U.S. trademark registration for the word “Botox” for a pharmaceutical with widely ranging uses including neurological disorders, muscle dystonias, cerebral palsy, etc. “Botox” is a fanciful term that does not suggest to consumers a therapeutic product (particularly with the suffix “tox”) and is a strong mark. (The generic term for the pharmaceutical is botulinum toxin.) 

Because Botox was one of the earliest brands of Botulinum toxin widely available and used for cosmetic purposes it risks becoming a generic mark. There are competing products in the market, like Dysport, Jeuveau, and Xeomin. But because Botox has become closely associated with injectable neurotoxins, regardless of their source, it may lose its adjectival status “Botox neurotoxin” and devolve into a common noun “botox”. 

Allergan aggressively protects the Botox trademark, most recently claiming a cosmetic manufacturer infringed it by marketing a facial cream under the name “NoBotox”. If Botox were deemed to have become a generic term for neurotoxins used for cosmetic purposes Allergan would not be able to prevent another’s use of “NoBotox”.