Texas Border Business
By Jorge Millan
In Mexico, as well as in the United States, a registered trademark can be attacked because of three specific reasons and one basic general reason inserted in the Industrial Property Law. The actions that can be used are: (i) that the registered trademark has not been used for over three consecutive years during the ten-year life of a registration (“lack of use”); (ii) cancelation: due to violation(s) of one provision or more of the law; and (iii) annulment, usually because the registered trademark has become a generic name.
The generic nature in the trademark world originates from its use. That is, the registered trademark, because of its repeated use, has become a name that designates the product or service itself. For instance, there is a registration that designates Band-Aids®; a plastic band with a gauze in the middle that is placed on top or around a wound in the skin to protect it. A subsidiary of an American company registered in Mexico: Curad De Curitas.
Over the years, people in Mexico would go into a pharmacy and ask: “give me a box of Curitas”, meaning that they wanted a box of Band-Aids®. The word Curitas since then has become a synonym of Band-Aids®. Another example is Scotch® tape. The same situation happened when a buyer would ask the clerk in a store for a Scotch tape instead of simply requesting a tape with glue on one side.
From the marketing point of view that would be the dream of any manufacturer. However, in this case the registered trademark is seriously risking losing the registration because it legally becomes a generic or a name of common use. Should that happen, anyone could file an annulment action based on the generic nature of the trademark promoted or even allowed by the original owner.
That is why big companies that own those registrations are very careful and spend a lot of money in defending their ‘generic’ trademarks from others who try to register the same or a similar name. There is a final cause for filing an annulment action that I think nobody uses and it relates to the violation of any provision in the law.
In my opinion the reason I have not seen it used is the result of the need for long legal explanations that no one uses. This is because it is very difficult to prove.
This is the case of La Michoacana popsicles, because it is so difficult to prove that it has become a generic name. However, the key to the question is that this trademark is certainly of common use.
Not long ago, while walking down the street, a young couple approached me to ask if there was a La Michoacana nearby. It was obvious that they wanted to buy a popsicle.
Because of the large Hispanic population there have been many attempts to register the name in the U.S. Some of them became successful federal trademark registrations. Jorge F. Millan, [email protected]