Garfield, E., "Food information services", Food Manufacture, 45(11) p. 92-93 (November, 1970)
Food information services
SIR — It was most thoughtful of you to explain why no mention was made of ISI's food information services in the article by E. J. Mann.
"Current Contents" is a registered trademark and any use of the words "current contents" in juxtaposition to describe a contents page service or any similar information service is a violation of our trademark. The article by Mr. Mann clearly describes such a service. In fact, the word "current" includes a capital C and there can be no question that anyone familiar with our Current Contents® service would confuse his use of the phrase "current contents" with our registered trademark.
Trademark registration is indeed designed to prevent the use of the words "trademarked" for those situations where the trademark is applicable. For example, there is nothing to prevent you from using the phrase "current contents" in the following way—"The editor of Food Manufacture listed the current contents of his publication for the audience." Trademarks do not impede social communication. On the contrary, they make communication less ambiguous. Surely you are not going to take the position that the trademark of an information service is less significant than the trademarks of the many firms which advertise in your excellent journal.
You should also note that our long continuous use of "CURRENT CONTENTS" as our trademark on a very substantial scale throughout the world has conferred upon it what I believe is termed under both British and U.S. law "secondary meaning." Indeed, our trademark counsel advises that that well-known British text, Kerly's Law Trade Marks and Trade Names, 9th Edition, by T. A. Blanco White, Sweet & Maxwell, London, 1966, states the law in Great Britain to be:
"748: A word which has, at one time, been in common use in a trade with a mere descriptive meaning may subsequently come to have special reference to the goods of a particular trader, who will then be entitled to prevent others using it without sufficiently distinguishing their goods."
In our situation, no one, to my knowledge, made use of "CURRENT CONTENTS" with the words in juxtaposition to each other until our substantial usage began. I believe our usage fully qualifies for protection under the aforesaid passage from Kerly as well as under like holdings under U.S. law.
Accordingly, I can only request that no further usage be made of our "CURRENT CONTENTS" trademark in any manner which might give rise to confusion with our publication.
EUGENE GARFIELD PH.D.,
President, Institute for Scientific Information,
325 Chestnut Street, Philadelphia, Pa. 19106, U.S.A.