HOW TRADEMARKS CAN BECOME GENERIC
Ivan Hoffman, B.A., J.D.
Sometimes perfectly good trademarks, often those which have been the most successful, can lose their trademark protection because they have actually been too successful. There are other instances where through lack of proper use, the marks may also become generic. This article will not address issues about initial applications for marks that are held to be generic.
Let’s first define the trademark term “generic.” Remember (see the many other articles on this topic on my site under the link “Articles About Trademarks and Domain Names”) that trademarks are designed to protect the public so that the public can know when it buys a product or service with a particular trademark (a “brand” to use the common parlance), that that product or service comes from a particular source. Thus trademarks are only protected when they designate a particular source. When a mark no longer serves to identify that source, it can become either “descriptive” or “generic.” (There are distinctions between the legal terms “descriptive” and “generic” but these go beyond the scope of this article.) These 2 terms mean that the mark no longer serves as an “identifier” but instead refers only to the actual goods or services and not to the provider of those goods or services. Classic examples of this are the former trademarks for “aspirin” (a brand of pain reliever), “cellophane,” (a brand of wrapping paper) “escalator” (a brand of moving stairs) and similar marks. These former “brands” became so closely identified with the product or service that the public associated the “brand” with only the product or service and not to the provider or manufacturer of that particular brand of product or service.
The Trademark Manual of Examining Procedure (TMEP) states in part:
The above examples may have resulted from the sheer success of the products and their dominance in the marketplace so that they eclipsed other providers of the same products. It is worth noting, however, that even if a mark becomes “generic” in one country, that does not mean it is generic in other countries as usages may be different. In the United States, the legal test for whether a brand is generic is how it is perceived by the public. Remember: trademarks are designed to protect the public.1209.01(c) Generic Terms
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re Am. Fertility Soc’y, 188 F. 3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.
There is a two-part test used to determine whether a designation is generic: (1) What is the genus of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the primary significance that the term would have to the relevant public.
But there are other ways that a trademark, once valid, can cease to function as an “identifier” and can become generic for the product or service. Sometimes a mark starts to be used as a noun or a verb instead of an adjective or an adverb. Remember from grammar school that an adjective “describes” a noun and an adverb “describes” a verb. These type uses present risks that the mark may become generic for the product or service. Such uses would be prohibited by the owners of the marks.
Additionally, if the trademark owner refers to its goods or services by the brand name, that may be evidence that the mark has become generic for the said goods or services. Instead, the brand name should be used to refer to the goods and services such as “The X brand of [goods/services].”
Moreover, if a trademark owner does not use the ® designation, if a trademark owner does not use a different font or type size when referring to its trademark, these are other ways in which a trademark can lose its source-identifying qualities.
The above are just some but not all of the ways a “brand” can lose its value as an identifier and become generic.
Success of a brand does
not automatically lead to the brand becoming generic. But a trademark
owner must be careful to protect that brand by proper usage by the owner
and the consuming public.
Copyright © 2012 Ivan Hoffman. All Rights Reserved.