Generic Trademark

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Generic Trademark

Generic trademarks aren’t trademarks at all.  Instead, the United States Patent and Trademark Office (USPTO) will not allow them to register and they are unprotectible through claims of trademark infringement.

So attempting to own a generic trademark will inevitably lead to lost time, money and reputability.

Generic Trademark Definition

Of all the types of trademarks that brands can use, those that fall under the generic umbrella offer no protection.  A local shoe store that simply called itself “Shoe Store” for instance, would have no rights to that identifier.

Since they describe common terminology for specific industries, these terms can be used freely by any brand in the development, marketing, promotion and other aspects of creating and selling their products or services.  Strong trademarks can also become generic over time due to genericization. This process opens the door for anybody to use the trademark without authorization.

Can You Trademark a Generic Term?

Since they’re used by countless brands within a given industry, you typically cannot trademark a generic term. Doing so would unfairly disadvantage other companies in the market. If someone were able to claim trademark rights over the word ‘hot dog,’ for instance, how could other businesses describe their competing product?

These rules don’t necessarily mean that common terms can’t be used within a brand identifier. Whereas ‘gym’ may be a generic term within the fitness industry, it doesn’t prevent countless brands from registering trademarks that contain the word. When using such terminology in this matter, however, a trademark disclaimer – as shown below – will be necessary:

No claim is made to the exclusive right to use “GYM” apart from the mark as shown.

Such a disclaimer puts the public on notice that you are claiming no rights over the generic or descriptive portion of the registered term. This lets your competitors know that they can use a word without fearing potential trademark litigation.

Generic trademarks can also relate to designs that are commonly used. A sports memorabilia manufacturer who attempted to register a basic baseball bat design for the sale of bats, for instance, would have their trademark application refused. As is the case with terminology, though, these visual aspects can be used as part of a larger overall design.

While trademarking generic terms on their own isn’t allowed, use is still permitted in helping you to distinguish your brand from others.

Descriptive vs Generic Trademarks

When comparing levels of protection, descriptive trademarks are only slightly stronger than their generic counterparts. Rather than characterizing a category of products or services, descriptive trademarks instead describe a characteristic. The words ‘cold and creamy’ in the brand Cold and Creamy Ice Cream, for instance, would be considered descriptive.

One of the similarities between these two types of brand identifiers is the need for a trademark disclaimer.  The major difference between descriptive and generic trademarks is that the former can actually be registered. Whereas the Principal Register is the primary source of record for the USPTO, the Supplemental Register lists brand identifiers that are considered descriptive yet still strong enough to function as a trademark.

While this secondary register doesn’t provide the same benefits as the primary, it does allow for potential primary registration through acquired distinctiveness. This occurs when a merely descriptive term or design becomes directly linked to a brand in consumers’ minds. This cannot happen with generic trademarks even if secondary meaning is somehow attained.

Descriptive brand identifiers also provide protection from trademark infringement.  Because of the difficulty in protecting descriptive and generic trademarks, it’s ideal to create a distinctive trademark from the start.

Generic Trademark Examples

The following is a list of generic trademark examples:

  • Adhesive bandages: Johnson & Johnson own the rights over the commonly used ‘Band-Aid.’
  • Inflated cushioning: Sealed Air has the trademark for the term ‘Bubble Wrap.’
  • Lip balm: The more commonly used term, ‘Chapstick,’ is owned by Pfizer.
  • Slow cooker: Sunbeam Products owns the rights over ‘Crock-Pot.’
  • Flying disc: ‘Frisbee’ is owned by the Wham-O company.
  • Compact SUV: The trademark for the commonly used term ‘Jeep’ is owned by Chrysler.
  • Table tennis: Parker Brothers has exclusive rights over ‘Ping-Pong.’
  • Inline skates: The term ‘Rollerblade’ is owned by Nordica.

Usage of the common names of these products would be considered a generic trademark. If you were to commercially utilize any of the brand names mentioned – even though they’re commonly used by consumers – you may face an infringement lawsuit.

This list does not include generic trademark examples that have been recognized as unitary. Unitary status means that the combination of words in a brand identifier creates a distinct commercial impression in the minds of consumers. It may not be necessary to disclaim generic terms if a trademark meets this requirement.

Attempts to Own Generic Trademarks

  • .com: Courts blocked the registration of ‘hotels.com.’ Courts have taken the position that merely adding a top-level domain does not negate the fact that ‘hotels’ is generic.
  • Footlong: Subway attempted to gain rights over ‘footlong,’ but courts found that the term was generic and used by many sandwich makers in reference to the length of the sandwich.
  • Revving engine: Harley Davidson attempted to trademark the sound of a revving engine. Certain sounds can be trademarked, but the sound in question is common among many vehicles.

Trademark Genericization

Not all generic trademarks started out as commonly used terms and designs. Even the strongest brand identifiers face the possibility of becoming generic at some point. This typically only occurs when a company has established a level of marketing dominance that causes consumers to equate their trademark to the entire product or service category.

When this occurs, the trademark in question has experienced genericide. This removes all the rights that were previously held and – in most cases – prevents the trademark from ever being registered again.  Genericization most often comes up through trademark litigation or trademark cancellations. Defendants can argue in court that they didn’t commit infringement because an identifier is no longer associated with a specific brand in the eyes of a consumer. If they’re successful, the trademark in question is no longer valid.

Individuals seeking cancellation can argue the same point without going through litigation. There are about 2000 petitions to cancel filed each year.   Many companies have found it difficult to prevent their trademark from becoming generic. You can decrease the possibility of this occurring through the following measures:

    • Use the trademark as adjective to generic terms.
    • Avoid using brand identifiers as verbs or nouns.
  • Add the word ‘brand’ after your trademarked property.
  • Offer more than one product or service so a brand doesn’t become generic for a category.
  • Monitor licensee use.
  • Avoid using plural forms of trademarks.
  • Always use a trademark symbol to signify ownership.
  • Don’t abbreviate brand identifiers.
  • Police and respond to instances of trademark infringement.
  • Use special fonts or capitalization to distinguish identifiers.

The terms ‘escalator,’ ‘trampoline,’ ‘thermos,’ ‘teleprompter’ and ‘videotape’ were all once protected trademarks. It can be financially devastating to lose ownership over a trademark, so it’s your job to fight against genericization at all costs.

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For any issues related to generic trademarks, please feel free to contact us at any time.

 

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