Avoiding Pitfalls of a Generic Trademark

Avoiding Pitfalls of a Generic Trademark

One of the prerequisites to securing a Federal Trademark registration is through the use and creation of a distinctive mark.  There are five main categories of marks that exist which provide varying levels of distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. While, suggestive, arbitrary and fanciful marks are considered distinctive by the Trademark Office, both, generic and descriptive marks fail to reach that threshold.

A fanciful mark is one that has no meaning outside of its use as a trademark, such as Exxon or Starbucks. An arbitrary mark is a word that is known but is in no way related to the goods or services being offered; a classic example is “Apple” for computers. A suggestive mark suggests a character or quality of the goods but requires at least some though or imagination to relate the term to the goods themselves. Some common examples of suggestive marks include Microsoft, Citibank and Greyhound. A mark that is merely descriptive of the goods and services offered in connection with the mark generally is not entitled to registration on the Principle Register.  However, a mark that may be classified as merely descriptive may be able to gain acquired distinctiveness through secondary meaning over the passage of time.  In most instances, acquired distinctiveness is usually shown through five or more years use and evidence that consumers have come to associate the mark with the goods and services offered.

Generic marks, however, have no such exception; the Lanham Act clearly states that generic marks are not eligible for registration.  Generic marks are those that are named after the goods or services being sold.  For example, if someone sought to register the mark “Apple” for the sale of apples, the Trademark Office would consider this to be generic.  Alternately, when the term, “Apple” is used in conjunction with computers, this use would be allowable as the mark does not relate to the goods being associated with the mark.  One of the main principles behind this rule is that the Trademark Office seeks to prevent the ownership of common terms, and rather allow these terms to be in the public domain for everyone to use.

In some instances, a mark may start out as distinctive, however over time the marks may become generic due to the public’s perception and use of the mark.  In these circumstances, the Lanham Act based on §14(3) calls for cancellation of the registration.  A few examples of marks that have become generic over time include “Escalator,” “Aspirin,” “Thermos,” “Trampoline,” and “Dry Ice.”  Each of these marks became victims of what has come to be known as “genericide.” The public adopted these marks as a name for the good itself, forfeiting the use of the terms as a brand.

Other marks have trended towards generic in nature, but have been able to escape cancellation; these marks include Google, Kleenex, Band-Aid, Crock-pot, Frisbee and Ping Pong. Although many people use these terms to describe the general good or service, the current generic terms still remain, namely internet search engine, facial tissue, adhesive bandage, slow-cooker, flying disc and table tennis. Owners of these marks have been able to maintain ownership through active enforcement of their rights against unauthorized users and through advertisement and labeling of their products to promote these marks as a brand rather than as a product.

The more popular a mark becomes, and the more the mark tends to dominate the field of its particular good or service, the harder it becomes for owners to avoid the cancellation due to the genericide of the mark.

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