Citation. Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 874 F.2d 95, 10 U.S.P.Q.2D (BNA) 1748 (2d Cir. N.Y. May 1, 1989)
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Brief Fact Summary.
The Murphy Door Bed Co. (Plaintiff), manufacturer of Murphy beds, claimed that its common law trademark had been infringed.
Synopsis of Rule of Law.
The burden is on the defendant to prove that a term has become generic where the public is said to have expropriated a term established by a product developer.
William Lawrence Murphy invented and manufactured a bed at the turn of the century that could be concealed in a wall closet when not in use. He was issued a patent in 1918 and has used the words Murphy bed as a trademark for the concealed beds since the Murphy Door Bed Company (MDBC) (Plaintiff) was founded in 1925. In 1918, the Patent and Trademark Office denied Plaintiff’s application to register the Murphy bed trademark because the words Murphy bed had become generic and the phrase only provided a description of the goods. In 1984 the Trademark Trial and Appeal Board (TTAB) affirmed the denial of registration. Interior Sleep Systems, Inc. (Interior Sleep) (Defendant) entered into a distributorship agreement with Plaintiff in 1981 and, when it learned of the TTAB’s denial of MDBC’s application for trademark registration, it began using the term Murphy bed in the title of a new corporation that made the same type of beds. When Plaintiff sued, the district court found that the name Murphy was not generic because a secondary meaning had been attributed to it by the general public, and that the common law of trademark protected MDBC (Plaintiff). The court found that Interior Sleep (Defendant) had not met its burden to demonstrate abandonment of the Murphy trademark. Defendant appealed, claiming that because the Murphy mark was not registered, the court erred in shifting the burden of proof to them.
Is the burden is on the defendant to prove that a term has become generic where the public is said to have expropriated a term established by a product developer?
(Miner, J.) Yes. The burden is on the defendant to prove that a term has become generic where the public is said to have expropriated a term established by a product developer. The district court was correct in placing the burden of proof regarding the term’s generic-ness upon Interior Sleep (Defendant). But Defendant did indeed establish that the term Murphy bed is a generic term, having been appropriated by the public to designate a type of bed generally. The factors of the TTAB finding, standard dictionary definitions, and evidence of numerous newspaper and magazine use of the phrase to describe generally a type of bed lead to that conclusion. MDBC’s (Plaintiff) efforts at policing its mark are of no consequence when the mark has entered the public domain beyond recall. Reversed.
This case demonstrates why companies fight so hard to prevent their trademarks from becoming generic through casual use. In another part of this case, the court held that Interior Sleep (Defendant) had engaged in unfair competition by passing off beds of their own manufacture as beds of the MDBC (Plaintiff). The court also found that Defendant had breached its contractual obligation to refrain from using the term after termination of the agreement.