The Murphy Door Bed Co. Inc v. Interior Sleep Systems Inc
874 F.2d 95 (2nd Cir. 1989)
United States Court of Appeals for the Second Circuit
Facts: William Murphy invented and manufactured a bed that could be concealed in a wall closet. Mr. Murphy incorporated in 1925 as the Murphy Door Bed Company and began to sell the wall bed under the name “Murphy bed.†The Murphy Co. used the words “Murphy†and “Murphy bed†as its TM for concealed beds. In 1981, Interior Sleep Systems (D) entered into a distributorship agreement with Murphy Co. Twice, in 1981 and 1982, Murphy Co. applied to register the “Murphy bed†TM with the Patent and TM office. Both times the PTO denied the application stating that the words “Murphy bed†had become generic. After learning that Murphy’s application for TM registration was denied, D formed its own corporation with the term “Murphy Beds†in the title, and then filled orders with both beds of its own making and beds from the Murphy Co.
Lawsuit: Murphy Door (P) sued D seeking a permanent injunction enjoining D from using the Murphy Name.
Procedure: The District Court entered judgment for Murphy (P), ruling that the name Murphy was not generic because a “secondary meaning†had been attributed to it by the public. Therefore, the district court held that the burden was on the D to show abandonment of the Murphy TM, which the court then found that the D did not sustain its burden. D appealed.
• In finding a lack of genericness, the d. ct was influenced by P’s efforts at policing its mark.
o However, when the mark has entered the public domain beyond recall, policing is of no consequence to a resolution of whether a mark is generic.
Rule: A term or phrase is generic when it is commonly used to depict a genus or type of product, rather than a particular product.
Rule: When a term is generic, TM protection will be denied except for those markets where the term still has not become generic and a secondary meaning has been shown to continue.
Rule: The burden is on the D to prove that the alleged mark generic if the term at issue is claimed to be generic by reason of common usage or by reason of expropriation.
Issue and Holding: Whether the district court erred in granting P a permanent injunction enjoining D from using the Murphy Name?—YES
Reasoning: “Murphy bed†is a generic term. As a generic term, defendants could not have infringed on P’s TM, alleged to be Murphy bed. Therefore, the district court erred in finding TM infringement.
Black Letter Law: cancellation of a mark because it has become generic donates that mark to the public domain, enabling other competitors to use it for the same or similar products.
Several factors led the Second Circuit to conclude that the D did show that the term “Murphy bed†has become generic.
1. The decision of the PTO rejecting the TM on the grounds that it has become generic;
2. The term “Murphy bed†is included in many dictionaries as a standard description of a wall-bed;
3. Newspapers and magazines use the phrase “Murphy bed†to describe a type of bed.
874 F.2d 95 (2nd Cir. 1989)
United States Court of Appeals for the Second Circuit
Facts: William Murphy invented and manufactured a bed that could be concealed in a wall closet. Mr. Murphy incorporated in 1925 as the Murphy Door Bed Company and began to sell the wall bed under the name “Murphy bed.†The Murphy Co. used the words “Murphy†and “Murphy bed†as its TM for concealed beds. In 1981, Interior Sleep Systems (D) entered into a distributorship agreement with Murphy Co. Twice, in 1981 and 1982, Murphy Co. applied to register the “Murphy bed†TM with the Patent and TM office. Both times the PTO denied the application stating that the words “Murphy bed†had become generic. After learning that Murphy’s application for TM registration was denied, D formed its own corporation with the term “Murphy Beds†in the title, and then filled orders with both beds of its own making and beds from the Murphy Co.
Lawsuit: Murphy Door (P) sued D seeking a permanent injunction enjoining D from using the Murphy Name.
Procedure: The District Court entered judgment for Murphy (P), ruling that the name Murphy was not generic because a “secondary meaning†had been attributed to it by the public. Therefore, the district court held that the burden was on the D to show abandonment of the Murphy TM, which the court then found that the D did not sustain its burden. D appealed.
• In finding a lack of genericness, the d. ct was influenced by P’s efforts at policing its mark.
o However, when the mark has entered the public domain beyond recall, policing is of no consequence to a resolution of whether a mark is generic.
Rule: A term or phrase is generic when it is commonly used to depict a genus or type of product, rather than a particular product.
Rule: When a term is generic, TM protection will be denied except for those markets where the term still has not become generic and a secondary meaning has been shown to continue.
Rule: The burden is on the D to prove that the alleged mark generic if the term at issue is claimed to be generic by reason of common usage or by reason of expropriation.
Issue and Holding: Whether the district court erred in granting P a permanent injunction enjoining D from using the Murphy Name?—YES
Reasoning: “Murphy bed†is a generic term. As a generic term, defendants could not have infringed on P’s TM, alleged to be Murphy bed. Therefore, the district court erred in finding TM infringement.
Black Letter Law: cancellation of a mark because it has become generic donates that mark to the public domain, enabling other competitors to use it for the same or similar products.
Several factors led the Second Circuit to conclude that the D did show that the term “Murphy bed†has become generic.
1. The decision of the PTO rejecting the TM on the grounds that it has become generic;
2. The term “Murphy bed†is included in many dictionaries as a standard description of a wall-bed;
3. Newspapers and magazines use the phrase “Murphy bed†to describe a type of bed.