Have you ever seen a company pop up multiple times in the headlines for defending its trademark name? You may have wondered, “Do they really need to go after every company that uses something similar? Are they just being aggressive?” If you are not immersed in the intellectual property world, it is easy to forget that trademarks and copyrights persist on a “Defend Your Territory” basis. It is as if they exist on a shore that can be built up or eroded depending on how the owner handles the incoming tides. One such tide that can really erode a trademark is genericide.
Genericide is the loss of a trademark’s distinctiveness to common usage. In a recent case brought by the Milwaukee World Festival (MWF) against the Minnesota Twins over the trademark SUMMERFEST, we see how MWF is protecting its mark from genericide – for this case is just one of many.
Summerfest & Summer Fest
The current lawsuit revolves around two summer musical events that proved too similar for MWF’s lawyers to stay quiet. MWF has hosted Summerfest, a prominent Midwestern music destination, in downtown Milwaukee, WI since the late 1960s. They applied for a trademark registration with the United States Patent and Trademark Office (USPTO) for SUMMERFEST ame in 1972 in Class 41, for entertainment events. In 1993, they registered SUMMERFEST in Class 25 for clothing. Their trademark ownership has clearly been long-standing.
In 2022, the Twins Club hosted a music festival in Minnesota with the name “Summer Jam.” But this year, they switched to “TC Summer Fest.” The festival also hosted several of the same major headliners and took place one week after Summerfest, piling on the similarities.
This is when it became a problem for MWF. The Milwaukee music organization sent a cease-and-desist letter to the Minnesota Twins – but the Twins proceeded with TC Summer Fest in July of this year in spite of that warning. Their justification? TC Summer Fest is a “homage” to Milwaukee’s Summerfest, a Midwestern music festival sibling.
MWF was not flattered. They have filed a lawsuit against The Twins for trading on the recognition and goodwill that MWF has been building for decades with Summerfest audiences. The MWF are no stranger to this sort of litigation and negotiation. MWF has engaged in conflicts and/or licensing agreements with over 30 other parties that have infringed the MWF trademark “Summerfest” or some similar variation.
You might argue that “summer” and “fest” are too generic to register as a trademark – that any festival taking place in the summer could be called “Summerfest.” If MWF were trying to register a trademark now, perhaps that would be true. But they have invested so many years in creating a brand around Summerfest, they have acquired distinctiveness in the marketplace. So they must constantly defend it from erosion, perhaps because it could slip into the sea of genericness so easily.
Why Does It Matter If a Trademark Becomes Common?
The power of a trademark comes from consumer recognition, that moment when you hear a name or see an icon and experience the rush of all your associated memories and feelings (which hopefully are positive, though it can go either way). Losing that strong recognition as a source identifier means that your brand might no longer be someone’s first choice when they decide to actually make a purchase. Though the idea of trademark distinctiveness and fancifulness can sound ethereal, the consequences of genericide are quite material for a business.
For example, you may have noticed that some communities in the U.S. South refer to all sodas as “Coke.” An exchange like this would be common to hear:
“It’s hot – do you want a Coke?”
“Okay, what kind?”
If Coke did not invest in the upkeep of its brand as a specific type of soda, and this became the norm nationwide, “Coke” would no longer reference a specific brand – it would simply be another word in America for “soda.” On these grounds, they could lose their registered trademark in the U.S. Other brands could start using the word “Coke” on their products. The tide would encroach on Coke’s carefully built brand.
This is why genericide is such a big deal to companies. When your trademarks become weak, consumers lose focus on your services or products, and their purchase choices become scattered away from you.
TC Summer Fest Reckoning
Unfortunately for TC Summer Fest, MWF has put a lot of effort into making sure that “Summerfest” has not become common usage. It is very unlikely that TC Summer Fest will prevail in this lawsuit, and it could become quite an expensive affair for them. At the very least, it is very likely that TC Summer Fest 2024 will not happen.
So, in the end, this story is a cautionary tale on two points:
- Conduct thorough trademark clearance searches before choosing your official name for any product or service, and
- Defend your trademark from infringement with vigilance so it does not erode away like sand on the seashore.