Generic Trademarks

What Is A Generic Trademark?

A generic trademark, under Trademark Law, is a mark that has become synonymous with the name of a product or service to the extent that the trademark is seen as the product or service itself. Essentially, it’s when the brand name becomes the generic name for an entire category of products or services. This typically occurs when the product or service becomes so popular or common that its name becomes the colloquial or generic term for that particular type of product or service. For example, “Aspirin,” “Thermos,” and “Escalator” were once trademarked brand names that have since become genericized.

A significant point to note is that generic terms cannot be protected under Trademark Law. This is because trademarks are intended to identify the source of goods or services and distinguish them from those of other entities. When a term becomes generic, it fails to fulfill this function as it no longer distinguishes the goods or services of one entity from those of others.

The United States Patent and Trademark Office (USPTO) has a key role in determining whether a term has become generic. When a trademark application is submitted to the USPTO, the application is reviewed by an examining attorney who determines whether the proposed mark is likely to cause confusion, is descriptive, or is generic.

If the examining attorney determines that the proposed mark is generic for the goods or services for which registration is sought, the application will be refused registration on the Principal Register under the Trademark Act. The applicant may argue against a refusal by providing evidence that the mark has acquired distinctiveness through substantial exclusive and continuous use in commerce for the five years before the date of the claim of distinctiveness.

However, even after a trademark is registered, it can still become generic over time if it’s used widely and indiscriminately to refer to a type of product or service. This process is often referred to as “genericide.” If a trademark owner does not adequately police their trademark and prevent its generic use, they risk losing their exclusive rights to the trademark – but this is pretty rare.

Combined Term Trademarks

A combined term trademark is a mark that comprises two or more terms or phrases, which, when combined, create a distinctive identifier for a product or service. This could include a combination of words, phrases, symbols, or designs. These combined terms can create a unique and protectable trademark, even if the individual words within the trademark might not be distinctive on their own.

For instance, “Microsoft” is a combined term trademark that merges “microcomputer” and “software.” Although these individual words may be generic or descriptive for computer software products, their combination has created a distinctive and protectable trademark.

The USSPTO plays a critical role in assessing the eligibility of combined term trademarks for registration. When an application for a combined term trademark is submitted, an examining attorney from the USPTO will review the application to determine if the combined term is likely to cause confusion with any pre-existing registered or applied-for marks, is merely descriptive, or is generic.

In assessing the distinctiveness of a combined term trademark, the examining attorney considers the mark as a whole. Even if the individual terms might be generic or descriptive, the combination could still be registrable if it creates a unique commercial impression. The examining attorney also evaluates whether the combined term is likely to be perceived as a trademark by the relevant purchasing public, or if it is merely informational.

In conclusion, combined term trademarks represent an interesting aspect of trademark law, wherein the combination of otherwise unregistrable terms can create a distinctive and protectable trademark. The USPTO’s careful examination of these marks helps to ensure that only those marks that meet the criteria for registration are granted trademark protection.

Importance of Trademark Selection

The Spectrum of Distinctiveness is a classification system used in trademark law to distinguish between different types of trademarks based on their inherent distinctiveness. This spectrum is categorized into five types of marks, listed from least distinctive to most distinctive: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful.

• Generic trademarks are terms that the public associates with a category or type of goods or services, rather than with a particular source or provider. Because they lack distinctiveness, generic marks cannot be registered as trademarks. For example, using the term “Computer” as a brand for computers would be considered a generic mark.
• Descriptive trademarks merely describe a quality, characteristic, function, or feature of the goods or services. These marks are not inherently distinctive and can only be registered if they have acquired secondary meaning, which means that consumers have come to associate the mark with a particular source or provider over time. An example of a descriptive mark would be “Cold and Creamy” for ice cream.
• Suggestive trademarks hint at the nature, quality, or a characteristic of the goods or services but require some imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. These marks are inherently distinctive and can be registered without proof of secondary meaning. An example of a suggestive mark is “Microsoft” for a company that produces software for microcomputers.
• Arbitrary trademarks are common words that are used in a way that is not related to their ordinary meaning, thereby making the mark distinctive. These marks are also inherently distinctive and can be registered without proof of secondary meaning. An example of an arbitrary mark is “Apple” for a company that produces computers.
• Fanciful trademarks are invented words with no dictionary or common meaning. These marks are the most distinctive and enjoy the broadest level of protection. Like suggestive and arbitrary marks, fanciful marks can be registered without proof of secondary meaning. Examples of fanciful marks include “Exxon” for a petroleum company and “Kodak” for a photography company.

These categories along the Spectrum of Distinctiveness provide a framework to evaluate the inherent strength of a trademark and its eligibility for protection under Trademark Law.

Choosing A Strong Trademark

Choosing a strong trademark to be registered with the USPTO on the Principal Register is critical for several reasons.

A strong trademark is usually distinctive, unique, and non-descriptive, which not only aids in the likelihood of it being approved by the USPTO, but also assists in setting the product or service apart from others in the market. This distinctiveness can help consumers quickly identify and associate the trademark with your goods or services, thereby promoting brand recognition and customer loyalty.

Moreover, a strong trademark is less likely to be deemed confusingly similar to existing trademarks. This reduces the risk of infringement disputes, costly rebranding efforts, and potential damage to business reputation. It also helps to prevent competitors from adopting similar trademarks, which could confuse consumers and dilute the impact of your brand in the market.

Registering a strong trademark on the Principal Register with the USPTO also provides the registrant with a number of key legal advantages. For example, it offers a presumption of validity and ownership of the mark throughout the United States, which can be crucial in enforcement actions. It also provides the ability to bring an action concerning the mark in federal court, and to potentially recover profits, damages, and costs in such actions.

Furthermore, a registration on the Principal Register allows the owner to use the federal registration symbol ®, which can deter potential infringers. It also gives the owner the ability to record the trademark with U.S. Customs and Border Protection to prevent the importation of infringing foreign goods.

Ultimately, the selection of a strong, distinctive trademark that can be registered on the Principal Register is crucial in enhancing brand recognition, preventing marketplace confusion, and providing robust legal protection for the trademark.