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Generic trademarks are common terms used to name products or services, for example, a brand of shoes called "shoes." These marks don't qualify for protection.6 min read
2. Why Generic Terms Can't Be Trademarks
3. Strength of Trademarks
4. Understanding Genericide: How Trademarks Become Generic
5. Examples of Genericide
6. How To Avoid Genericide
7. How to Cancel a Trademark That's Become Generic
What Are Generic Trademarks?
Generic trademarks are common terms used to name products or services, for example, a brand of shoes called "shoes". Generic trademarks describe a product, so no one can register them as trademarks. These marks don't qualify for any protection.
Why Generic Terms Can't Be Trademarks
Generic terms such as "computer" cannot be registered as trademarks because anyone has the right to use generic words to describe the products they are selling. Giving trademark rights to generic terms would make the English language poorer and would restrict competition. This rule applies to both the principal and the supplemental registers.
Adding a dot-com(or dot-org, dot-net, etc.) suffix to a generic term isn't a possible option to transform generic terms in trademarks. The hotel booking engine "Hotels.com" tried to register its brand name as a trademark, but the Federal Circuit Court of Appeals rejected its application. Dial-A-Mattress also tried to register "Mattress.com" as a trademark and was rejected because the term is generic for any online store that sells mattresses and bedding.
However, it's possible to combine a generic mark with other words to have a trademark approved. The USPTO application, though, must include the mark combined with the other terms.
Strength of Trademarks
A trademark is more or less strong depending on how unique it is. The five categories of trademarks, from strongest to weakest, are:
- Fanciful marks
- Arbitrary marks
Arbitrary trademarks are real words with a meaning that's usually connected with a different class of products. "Apple" is an arbitrary trademark, because it's a real word but the brand relates to computers, not fruit.
- Suggestive marks
Suggestive marks are hinting made-up words that suggest a quality of the product. An example is Microsoft, that sells software for computers.
- Descriptive marks
Descriptive marks aren't simply suggestive but actually describe the product or service. Companies can't register descriptive marks as trademarks unless these have a secondary meaning.
- Generic marks
Generic marks are the weakest type of marks, and in fact, they can't be registered as trademarks in any case.
If you're wondering how to understand if your mark is generic, there's a two-part test you can take. First, you need to understand if the type of service or goods is determined in the mark. For example, if you're selling tables and wardrobes, is the word "furniture" in the mark?
Then, you must ask yourself if the consumers understand that the mark identifies the type of goods or services you're selling without educating them. If you answered "yes" to both questions, then the mark is generic.
Understanding Genericide: How Trademarks Become Generic
No matter how strong trademarks are, over time they can become generic and lose their protection as trademarks. This happens when a trademark that used to refer to a particular product is used to describe a whole group of products. Once this happens, it's hard to keep the trademark.
It's the responsibility of a company to protect their trademark. If they don't, a competitor can start an abandonment action and ask for the cancellation of a trademark because it's become generic. This process is called genericide.
Genericide brings obvious disadvantages to the company:
- The trademark loses its legal protection, and any competitor can use it to promote their products
- The brand name loses value and distinctiveness, and advertising the product becomes harder
- Genericide often leads to a loss of sales
On the other hand, when a brand name becomes generic, its common usage becomes free word-of-mouth advertising.
Examples of Genericide
We often use words that are now part of our common language but were born as trademarks. A few examples of genericide are:
Aspirin is a pain relief drug that contains acetylsalicylic acid. Bayer AG combined two German words and trademarked the term in 1917. Aspirin lost its trademark status in 1919, and now it's used in a generic way.
Cellophane is a made-up word that comes from the combination of "cellulose" and "diaphane" (transparent). Chemist Jacques E. Brandenberger trademarked the term in 1912. Cellophane is now a generic word in the USA but still holds its trademark status in other countries.
Otis Elevator Co. trademarked the term in 1900. "Escalator" became a generic term when the USPTO ruled that Otis itself used the term in a generic way in its own patents.
Bayer AG also trademarked the word heroin in 1898. The name of this drug comes from the German word for strong, "heroisch".
Frederick Walton, the Linoleum inventor, never trademarked its mark when he first created it in 1864. Genericide was fast: by the late 1870s, the term was already in common use.
How To Avoid Genericide
- Add the word "brand" after the trademark on the product packaging
Examples of brands that use this strategy include Poland Spring brand, Lysol brand, and Deer Park brand.
- Add a descriptor after the trademark
Pairing your trademark with a descriptive term/phrase can protect your brand by making clear that the brand name shouldn't be used as the generic name for the product.
Quite a few brands have used this technique. The Kleenex packaging says "Kleenex brand tissues", while Jello's says "Jell-O® brand gelatin". "Play-Doh - modeling compound" and "Via from Starbucks - ready brew" are other examples.
- Establish guidelines for the usage of your trademark
It's important to decide early on how you and your employees will use the trademark, and when the appropriate symbol (TM or ®) should be used.
Never use your trademark as a verb (such as, "to google") or as a noun, but always as an adjective followed by a generic noun ("a Ferrari car"). If you need to use your trademark in the plural form, make the following noun plural, not the trademark itself (for example, " Fanta drinks", not "Fantas"). Also, don't use it in a possessive form unless the trademark itself is possessive ("McDonald's®").
- Expand your business
Extending a brand's product family can help avoid genericide. The Band-Aid trademark was created solely for adhesive bandages, but when the term started to become a generic name, the brand reacted by expanding its business. Now Band-Aid sells foot care products and germ-killing drugs with the same trademark.
- Advertise the general term instead of the trademark
Google has discouraged media from using the expression "to google" to signify searching the web. Tylenol has started a campaign where they try to distinguish between their brand product and any other acetaminophen products. These brands might later be able to use these advertisements in court to prove that their customers still use their trademark in relation to their brand.
However, this strategy sometimes doesn't work. It's the case of Xerox, a photocopiers manufacturer, that spent millions of dollars to reinforce the general term "photocopy" and advertising that Xerox is a registered trademark that should only be used together with a general term. It wasn't enough: " to xerox" is now listed in the Oxford English Dictionary as a verb.
- Protect your trademark against infringement
Genericide usually happens when competitors start using the trademark to advertise their products. To protect your trademark, you need to protect it against this kind of use , even if it means suing competitors for infringement.
Also, keep an eye out for medias and outlets that misuse your trademark. Contacting the media directly, in this case works better than filing a lawsuit.
How to Cancel a Trademark That's Become Generic
If you wish to remove a trademark from the register, you need to file a "Petition to Cancel" with the Trademark Trial and Appeal Board. The applicant needs to prove that the disputed mark has become generic and that its registration damages the petitioner's business.
A lawyer at the USPTO can also start the cancellation process . When the applicant wins the case, the mark is removed from the register and it loses any protection. However, common law rights still apply.
When choosing a trademark, a company should pay attention not to choose a generic mark that can't be registered. Over time and with success, the company will also have to protect their mark from genericide. Following these guidelines will help ensure the brand remains strong.
If you have questions or concerns about generic trademarks, you can post them on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.