On 20 November 2003, geosynthetica.net forwarded an
article to Anthony Bradley of Bradley Industrial Textiles, Inc. (a gsa underwriter).
The focus of the article was about the word "Geotube.” Was it
a trademarked name or a generic term for the giant, sand-filled textile
tubes? Geosynthetica understands this to be an on-going debate so we sent
the article to Mr. Bradley to get his views. This prompted a letter to
the article's author, Carter Thompson. Mr. Bradley states his opinion
below:
Mr. Thompson:
I was forwarded, by geosynthetica.net, a copy of your article Shoreline
Protectors Run Afoul of Trademark dated October 23, 2003
The attached comments I have made are but a grain of sand in the Geotubes
installed in Galveston County.
In September 1991, the first United States manufactured Geotube was installed
at Noriega Point in Destin Harbor, Florida in conjunction with the Mobile District
Corps. of Engineers. This Geotube (two actually), as it was referred to, was
manufactured and installed by Bradley Materials Company, Inc. Valparaiso, Florida.On
December 16, 1991 Bradley Materials received an order confirmation for geotubes
to be shipped to project DACW-01-92-B-007 to a contractor
located in Pascagoula, MS.
On or about February 20, 1992 four fabrics were
being developed for evaluation, to use in the manufacture of “geotubes”.
GT 500 was developed by Nicolon Corp. at this time.
Designing
with Geosynthetics, Robert M. Koerner, PHD.
P.E. was first published in 1986, followed by the 2nd and 3rd editions
in 1990 and 1994 respectively. Dr. Koerner refers in his book the word
Geosynthetics.
Definition:
The generic term for all synthetic materials
used in Geotechnical engineering applications. It includes geotextiles,
geogrids, geonets, geomembranes, and geocomposites.
Other generic words that are mentioned specifically
throughout Dr. Koerner’s book include compound words such as geofoam,
geomats, geopipe, geospaces, geosynthetics, geotextiles, geofabrics, geosynthetic
clay liner (GCL), geocomposite and last but not least geo-others ( a potpourri
of new and emerging geosynthetics that will be discussed throughout this
book). All these segments within the geosynthetics industry are clearly
defined as to their purpose and end use. The continued growth of the geo-others
referred to in Dr. Koerner’s
book includes geotubes, geobags, geocontainers, geomats, to name a few.
A recent article in the Galveston Daily News
stated that a Ten Cate Nicolon representative said “they did not intend
to prevent people from using the word Geotube’”. Company lawyers
had advised that if geotube became commonly associated with the geotextile
bags, the trademark could be lost. “The concern prompted a search
over the internet that revealed thousands of generic references to geotubes,
company officers said”.
According to records available at the United States Patent and Trademark
Office, geotube, geocontainer, and geobag were claimed to be owned by Nicolon
Corporation (2170 Satellite Boulevard Suite 350, Duluth, Georgia 30097).
These filings claim first use of all three words as well as first use
in commerce all on the 18th day of October 1993.
Let this be the first step to cause more concern
for those claiming ownership of the words geotube, geocontainer, geobags,
geocells, geo-others,
geotextiles, geonets, geogrid, or any other generic compound word that
describes a product manufactured using any geosynthetic materials. If
it looks like a duck, walks like a duck, quacks like a duck, it is a
duck, but if it is a geoduck, it could be a clam (see Webster’s).
Geo:
the word ge- or geo whose function is that
of combining form, middle English – geo, Greek ge – geo meaning
earth, ground, soil.
Tube:
function noun. French from Latin tubus; any
of various usually cylindrical structures of devices; as a hollow elongated
cylinder b. a soft tubular container.
Thus the compound words geotube, geocontainer, geobag etc. etc. etc.
The words geotube, geocontainer as well as geobag are generic words commonly
used in the geosynthetic industry many years before September 1992.
Under section 1(a) (1) if the Trademark act,
15 U.S.C. 1051 (a) 1 “An
application based on use in commerce must be filed by the
owner of the mark.” A
1(a) application must include a verified statement that the applicant believes
it is the owner of the mark sought to be registered. 15 U.S.C. 1051 (a)
(3) (a) 37 C.F R. 2.33 (b) (1) an application that is not filed by the
owner is void. See it MEP 1201.02 (b) If an application is filed in
the name of corporation A and a sister corporation, corporation B,
owns the mark, the application is void as filed because the applicant
is not the owner of the mark.
A simple test is suggested under the Ninth Circuit
Model Civil Jury Instructions: Generic Trademark. The fourth category
of trademarks is entitled to no protection at all. They are called generic
trademarks and they give the general name of the product. It is generic
if the term answers the question “ What is the Product
being sold?” If the average consumer would identify the term
with all such similar products regardless of the manufacturer the term
is generic and not entitled to protection as a trademark. It is my
contention that Nicolon Corporation was not the owner of the words
geotube, geocontainer, or geobag on or before September 13, 1993 and therefore
it’s application
is void.
To cap a phrase from my esteemed friend whom
I know personally from the bench, Federal District Judge Samuel Kent,
United States District court
for the Southern District of Texas, Galveston Division. “But at the
end of the day, even if you put a calico dress on it and call it Florence,
a pig is just a pig.”
Perhaps if this were decided at his “bench” His
Honor might say at the end of the day (if he allowed any time at all) “ even
if you put a calico dress on it and call it Florence, a geotube is still
a geotube.”
Anthony S. Bradley
President
Bradley Industrial Textiles Inc.
Valparaiso, Florida
3258
Geotextile@aol.com
|