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.
One can capitalize on a market or fad created by another provided that it is not accomplished by confusing the public into mistakenly purchasing the product in the belief that the product is the product of the competitor.
View Full Point of LawIssue. 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?
Held. (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.
Discussion. 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.