Cracking the Code of Generic Trademarks: What You Need to Know
As a business owner or decision-maker, you’re likely well aware of the significance of trademarks in establishing a unique identity for your goods or services. However, the trademark landscape is vast and varied, with distinct categories ranging from highly distinctive marks to those perilously close to becoming generic.
In this comprehensive guide, we’ll delve into the intricacies of generic trademarks, exploring their definition, the USPTO’s determination process, and the potential dangers of genericization. Strap in for a journey through the trademark continuum!
The Trademark Continuum: From Fanciful to Generic Trademarks
In the realm of trademarks, the significance of any given term falls along a spectrum, ranging from highly distinctive marks to those that serve as the generic name for the associated goods or services. Determining the level of distinctiveness or descriptiveness of a designation necessitates evaluating its relationship to the specific goods or services it represents.
On one end of this spectrum reside marks that, in their association with goods or services, are entirely fanciful or arbitrary. Following these are suggestive trademarks, succeeded by designations that are merely descriptive. At the far end of this continuum lie generic terms that represent the goods or services and stand in stark contrast to the arbitrary or fanciful nature of marks at the other extreme.
Understanding Generic Trademarks
Generic terms are those that the average consumer recognizes mainly as the common or class name for specific goods or services. In legal terms, a generic term is considered “the ultimate in descriptiveness” according to Section 2(e)(1). This means that the term is so directly associated with the general category of products or services that it lacks the distinctiveness needed for trademark protection.
Section 2(e)(1) essentially sets the bar for trademarks, stating that if a term is purely descriptive or generic, it cannot be registered as a trademark. The law aims to ensure that trademarks are unique and capable of distinguishing the source of goods or services in the marketplace.
Moreover, generic terms are also unable to acquire distinctiveness under Section 2(f). Acquiring distinctiveness refers to the process by which a term that might initially lack inherent distinctiveness gains recognition as a trademark through extensive use and consumer recognition. Unfortunately, generic terms, being already common and widespread, are incapable of achieving this heightened level of distinctiveness.
Essentially, if a term is a generic name for a product or service, it cannot be transformed into a trademark with exclusive rights.
To provide clarity, let’s explore three examples of generic terms: “apparel” for clothing, “computer” for electronic devices, and “restaurant” for dining establishments.
USPTO's Determination Process for Generic Trademarks
A mark is deemed generic when its primary meaning to the public is associated with the overall class or category of goods or services for which it is used.
Two-Part Inquiry:
The USPTO employs a two-part inquiry to establish if a term is generic:
- Identifying the specific category or type of goods or services involved.
- Assessing whether the public predominantly perceives the term as referring directly to that particular category of goods or services.
Understanding Generic Trademarks: Common Usage and Public Perception
You don’t have to prove that people commonly use the term for a specific type of product/service. Instead, what matters is if the public would generally see the term as a common name for that type of product/service.
When deciding if a term is generic, the type of product or service it refers to is determined by how the company applying for the trademark describes it. The “relevant public” refers to the people who buy or use those specific goods or services.
To make a case that a term is generic, the examining attorney reviewing the application must provide a logical reason or basis. This reason should show that the people who buy or use those goods or services would mainly use or understand the term as a common name for that type of product or service.
Evidence in Determining Genericness
Determining whether a term is generic involves a careful evaluation of evidence. This evidence plays a critical role in understanding how the public perceives and uses a particular term in relation to products or services. Unraveling the nuances of genericness relies on the strength and relevance of the evidence presented.
Diverse Sources of Evidence:
Information about how people understand a word can come from different places like dictionaries, online databases, websites, newspapers, or other published materials.
EXAMPLE
When checking if a term like “THE CONSUMER PROTECTION FIRM” is a generic term for legal services, the lawyer examining the case looked at webpages from other consumer protection law firms and three different websites where people can search for lawyers using the term “consumer protection.” This helped show that many people see this term as a common way to find lawyers who specialize in that area.
Website Usage as Evidence:
The information on the company’s website and other websites can be used as evidence to understand what the proposed trademark means and how it is connected to the goods or services.
EXAMPLE
When the term “LAWYERS.COM” was being discussed as potentially generic for providing legal information online, the board looked at the company’s website and eight other sites with similar names like “lawyer.com” or “lawyers.com” to figure out how people generally use these terms for information exchange about legal services.
Competitor Use as Evidence:
Moreover, when other businesses in the same field use a similar term, it’s considered proof that the term might be too common and not specific enough to one source. This is another way to show that the term might be too ordinary to be protected as a trademark. Competitors using the same or similar terms indicate that the words are commonly understood in the industry and might not be unique enough to belong to just one company.
This is important because trademarks are meant to be exclusive, distinguishing one business from others. If many competitors use the same term, it suggests that the term is generic and shouldn’t be reserved for one business alone.
EXAMPLE
When newspapers, TV, or other companies also use the term “e-ticket” to talk about electronic tickets, it shows that the term is commonly seen as a general name for these kinds of tickets.
Multiple Generic Terms:
Sometimes, there can be multiple common names for a specific group of products or services. If people generally use or recognize a term to refer to that group or a specific part of it, that term is considered generic.
EXAMPLE
In the world of smartphones, terms like “cell phone” and “mobile device” are both generic because people use them to talk about the overall category of communication devices.
Generic Trademarks in Compound Terms or Phrases
First, let’s define compound terms or phrases.
A compound word mark is formed when two or more separate words (or parts of words) are combined to create a single word that represents a product or service. For instance, words like “BOOKCHOICE,” “PROSHOT,” “MAXIMACHINE,” and “PULSAIR” are compound word marks because they blend distinct words or syllables into a single word to identify a particular product or service.
Genericness Test Consistency:
Whether a trademark is a combination of words or a longer phrase, the test to determine if it’s too generic remains the same. The examining attorney reviewing it should try to provide proof of how the entire trademark is commonly used. Importantly, if there’s no evidence showing others using that exact combination of words, it doesn’t automatically mean the trademark won’t be considered generic.
If a term is made of two words combined together or shortened, the examining attorney checking it can prove it is generic by showing that each word on its own is already common and not unique. They need to demonstrate that when these words come together, they don’t create a new or special meaning; instead, the combined word means the same as what people generally understand from each word separately.
EXAMPLES
It was found that “SCREENWIPE” is a common name because both “screen” and “wipe” are commonly used words separately, and when combined, they don’t create a new or unique meaning.
Similarly, “MECHANICALLY FLOOR-MALTED” was considered common because “mechanically” means related to machines, and “floor-malted” describes a process used in brewing and distilling. When put together, these words don’t add anything new or different from what each word already means on its own.
However, the Court of Appeals for the Federal Circuit has specifically restricted the decision about “SCREENWIPE” to situations where two words come together to make one word. This applies when people generally see each separate word as common for a type of product or service. Also, when these words join, they don’t add any new meaning to the term; it just stays as common as the individual words.
So, in the case of American Fertility Society, the court said that just showing that “Society” and “Reproductive Medicine” separately were common words wasn’t enough to prove that the full phrase “SOCIETY FOR REPRODUCTIVE MEDICINE” was common for association services in reproductive medicine. Unlike the situation with SCREENWIPE, the evidence didn’t confirm that people would see the whole phrase as equally common as its individual words.
However, the Board clarified that the decision in American Fertility Society doesn’t mean a person can make a trademark just by adding a clearly common term to a word that doesn’t identify the source. Even if there’s no proof that others have used this combination, the Board must still check if putting those words together creates a new meaning for the whole mark according to the evidence available in the records.
Navigating Generic Trademarks: Real-World Examples
Marks Deemed Generic:
– The term “CHILDREN’S DHA” is considered a common name for nutritional supplements that contain DHA.
– The phrase “THE BEST BEER IN AMERICA” was declared too descriptive and laudatory to work as a trademark for Boston Beer’s products. It doesn’t help distinguish their goods or show where they come from.
– “BLINDSANDDRAPERY.COM” is seen as a common term for online retail services that offer blinds, draperies, and other wall coverings.
– The word “ATTIC” is regarded as a common name for sprinklers primarily installed in attics.
Marks Deemed NOT Generic:
– ANNAPOLIS TOURS, even though “TOURS” was disclaimed, was not considered common for conducting guided tours in historic districts and other city areas. However, the trademark was canceled because it was seen as just a descriptive term and hadn’t become distinct enough.
– INSTANT MESSENGER wasn’t seen as a common term for telecommunications or computer services providing real-time text messages. The applicant provided enough evidence to show that the term had become unique and recognizable under §2(f).
– CMS, standing for a wine made from the grape varieties cabernet, merlot, and syrah, was not considered a common term even though the words it comes from are generic. The Board highlighted that just because a term comes from generic words doesn’t automatically make it a generic term.
The Peril of Genericide: Protecting Your Trademark
Even the strongest trademarks can encounter a risky situation called genericide. Genericide happens when a once-unique mark becomes so widely used that it turns into a common name for a product or service. The original meaning of the trademark, indicating the source, changes to simply referring to the product or service itself.
Historical Examples:
Aspirin: Originally a trademark of Bayer, “Aspirin” was a distinct brand for acetylsalicylic acid, used as a pain reliever and fever reducer. However, due to its widespread use and popularity, the term lost its trademark status in many countries and became a generic term for this type of medication.
Escalator: Coined by Otis Elevator Company, “Escalator” was a registered trademark for a moving staircase. Over time, the term became so commonly used to describe moving staircases that it lost its distinctiveness as a brand and turned into a generic term.
Zipper: The term “Zipper” was once a trademark of the B.F. Goodrich Company for a particular fastening device. However, as similar fasteners entered the market and were also called “zippers,” the term lost its trademark status and became a generic term for any similar device used for fastening clothes or bags.
Preventing Genericide:
Protecting your trademark requires constant attention. You need to actively monitor its usage and take steps to prevent it from becoming a generic term. This involves educating the public about what makes your trademark unique and distinct from other common terms in the market. By consistently reinforcing its distinctiveness through proper use and communication, you can ensure that your trademark retains its exclusive identity and doesn’t fall into the trap of becoming a generic term.
Safeguarding Against Generic Trademarks
Trademark owners can do a few things to lower the chances of their trademark becoming generic. They can teach businesses and customers how to use the trademark correctly, make sure their trademark isn’t used as a common word, and properly enforce their rights to the trademark.
If your trademark is linked to a new invention, you might want to create a common name for the product to use in descriptions. This helps prevent people from using your main trademark in a way that’s not right. This common name is called a generic descriptor and is often added right after your trademark.
For instance, “Kleenex tissues” has “facial tissues” as the common name, and “Velcro-brand fasteners” uses “hook-and-loop fasteners” as the general term for Velcro brand name fasteners.
In the world of trademarks –
understanding what makes a trademark generic is crucial. From the continuum of trademarks to the determination process at the USPTO, we’ve explored how these terms evolve from fanciful to generic. Real-world examples have shed light on how even strong trademarks can face the risk of becoming generic.
Protecting your trademark is key to avoiding this fate. Whether it’s understanding common usage or the evidence needed to determine genericness, staying vigilant is vital. To safeguard your brand, consider reaching out to experts like TradeMark Express. Our guidance can help navigate the complexities of trademarks and keep your brand distinct. Contact TradeMark Express today and safeguard your trademark’s uniqueness.
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