Question

In 1932 Duncan Toys protected as a trademark (by filing a trademark application with the U.S. Patent and Trademark Office) the term "yo-vo" in connection with a toy consisting of a pair of joined discs with a deep groove between them in which string is attached and wound, which can be spun alternately downward and upward by its weight and momentum as the string unwinds and rewinds. Duncan thereafter sold its toy in the market. In fact, customers of Duncan and their competitors would commonly refer to the product as a "yo-yo," so that by the 1980's the public at large would refer to all stringed, spinning discs as "yo-yo's" regardless of whether they were sold by Duncan or a competitor. Assume that Duncan later (around 1990) challenged the use of the term "yo-yo" by Spinning Toy Corporation in conjunction with Spinning Toy's marketing and sale of a similar product called the "Spinning Toy yo-yo" claiming that Spinning Toy was infringing upon Duncan's trademark. Which of the following statements is correct?

• A. It is likely that Duncan will prevail because they registered the trademark and have continued to use it with regard to the sale of their product for more than five years.
• B. It is unlikely that Duncan will prevail because the trademark has become generic and is no longer protected as a trademark of Duncan's.
O C. It is likely that Duncan will prevail only if they can show that Spinning Toy was aware of the fact that Duncan had registered the trademark.
O D. It is unlikely that Duncan will prevail because the term of its trademark would have expired by the year 1990.

Answer 1

Step-by-step explanation:

B. It is unlikely that Duncan will prevail because the trademark has become generic and is no longer protected as a trademark of Duncan's.

When a trademark becomes generic and loses its distinctiveness, it can no longer be protected. In this scenario, the term "yo-yo" had become widely used by the public to refer to all stringed, spinning discs, regardless of the manufacturer. This demonstrates that the term has become generic and is no longer associated exclusively with Duncan's product. Therefore, it would be difficult for Duncan to successfully argue trademark infringement against Spinning Toy Corporation.