RE: Worst Case Scenarios - SPI and Lawsuits

Lists: spi-general
From: "Rourk, Chris" <crourk(at)AKINGUMP(dot)COM>
To: "'kaih(at)khms(dot)westfalen(dot)de'" <kaih(at)khms(dot)westfalen(dot)de>, spi-general(at)lists(dot)spi-inc(dot)org
Cc: brian(at)ristuccia(dot)com
Subject: RE: Worst Case Scenarios - SPI and Lawsuits
Date: 2002-03-11 13:20:51
Message-ID: 8552BC2B2F1FD311B33D00508B0CCBE104195092@AGDLEX01
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Lists: spi-general

**Actually, Bayer tells me on every package that Aspirin is a
**trademark. Just to remind everyone that it's a large world.

It could be registered in another country, but it's not in the U.S. See for yourself - go to and search the Trademark Electronic Search System (TESS) database - its free. To the extent its still a registered trademark in another country, that can be deceptive - the reason that ASPIRIN is generic in the US is because Bayer was foolish enought to try and sue someone to stop using it after years of non-enforcement, and a court declared that it was generic. You can keep your
trademark registration of a generic mark as long as you don't sue someone and try to enforce it. Someone else could always sue you to have your mark declared generic, but they rarely do that unless there's a good reason, as it costs alot of money.

For those still inclined to doubt, here is the case summary:


District Court, S.D. New York

272 F. 505; 1921 U.S. Dist. LEXIS 1355

April 14, 1921


PROCEDURAL POSTURE: Plaintiff drug company filed suit against defendant drug
company, alleging that defendant infringed plaintiff's trademark "Aspirin" for
the chemical compound "acetyl salicylic acid." Furthermore, plaintiff alleged
unfair trade by defendant.

OVERVIEW: Plaintiff drug company owned patent on the chemical compound "acetyl
salicylic acid," which it marketed under the trademark "Aspirin." From 1899,
plaintiff flooded the mails with assertions that "Aspirin" meant its own
manufacture. Manufacturing chemists, physicians, and retail druggists
recognized that " Aspirin" meant plaintiff's product, while the phrase "acetyl
salicylic acid" indicated the generic name for the product. In 1904, various
manufacturers began to market tablets of the drug labeled "Aspirin" directly to
consumers. A couple years before its patent expired in 1917, plaintiff attempted
to reeducate the public that the term "Aspirin" had proprietary meaning.
Alleging trademark infringement and unfair trade, plaintiff sued defendant drug
company. Finding that the word "Aspirin" had passed into the public domain,
court held that the drug could be marketed as such to the public without
qualification. However, court granted injunction against direct sales of the
drug under the name "Aspirin" to manufacturing chemists, physicians, and retail
druggists. Court rejected plaintiff's unfair trade claim, except for defendant's
use of the adjective "genuine" before "Aspirin."

OUTCOME: Court enjoined defendant from directly selling "acetyl salicylic
acid" under plaintiff's trademark "Aspirin" to manufacturing chemists,
physicians, and retail druggists. However, since word "Aspirin" had already
passed into public domain, defendant could market "acetyl salicylic acid" as
"Aspirin" without qualification to public. Except for defendant's use of
adjective "genuine" before "Aspirin," court rejected plaintiff's unfair trade

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