An Overview Of Generic Trademarks & Registrability

Are Generic Trademarks Registrable With The USPTO?

Understanding what constitutes a generic trademark under Trademark Law is essential for entrepreneurs and business owners. A generic trademark refers to a scenario where a brand name becomes so common and widespread that it transforms into the generic term for a particular category of products or services. In other words, the brand name loses its primary function as an identifier of the source and instead becomes the standard name for the item or service it represents. Classic examples of this include “Aspirin,” “Thermos,” “Escalator,” and “Kleenex” all of which were once trademarked brand names but later became generic terms.

A key point to note is that under Trademark Law, generic terms are not eligible for protection. Trademarks are designed to identify the origin of goods or services and set them apart from others. When a term evolves into a generic descriptor, it fails to serve this purpose because it no longer differentiates one provider’s goods or services from another’s.

The United States Patent and Trademark Office (USPTO) plays a critical role in determining whether a term has transitioned into a generic status. During the trademark registration process, an examining attorney at the USPTO reviews the proposed trademark to assess if it might cause confusion, is merely descriptive, or has become generic.

If the USPTO examining attorney deems the proposed mark generic for the products or services in question, the trademark application will likely be denied registration on the Principal Register in accordance with the Trademark Act. Trademark applicants can challenge this refusal by showing evidence that the mark has developed a distinctive character through extensive, exclusive, and consistent use in commerce for at least five years.

However, it’s important to remember that even after a trademark is registered, it can still become generic over time. This usually happens when the term is used excessively and broadly as a general descriptor for a type of product or service, a phenomenon known as “genericide.” Trademark owners must be vigilant in monitoring the trademark marketplace and preventing the generic use of their trademarks to maintain their exclusive rights. While losing a trademark to genericide is relatively rare, it’s a potential risk that underscores the importance of active trademark management and enforcement strategies.

Combining Generic Words To Create A Distinctive Trademark

Combining generic words to create a distinctive trademark is an innovative approach often employed by entrepreneurs and business owners. This strategy involves merging two or more terms, phrases, symbols, or designs to form a unique identifier for a product or service. The beauty of this method is that it can transform otherwise generic or descriptive individual words into a distinctive and protectable trademark.

Take, for example, “Microsoft,” a blend of “microcomputer” and “software.” While both terms may be considered generic or descriptive in the context of computer software products, their amalgamation has successfully established a distinctive and legally protectable brand identity.

The USPTO plays a pivotal role in the evaluation process of these combined term trademarks. When such a trademark is applied for, an examining attorney from the USPTO thoroughly reviews the trademark application. Their primary concerns include assessing whether the combined term might cause confusion with existing registered trademarks, whether the trademark is descriptive, or if it has become generic.

A critical aspect of this assessment is how the combined terms function together as a unit. The examining attorney doesn’t just look at the individual components of the trademark; instead, they evaluate the overall impression the combined term creates. Even if the separate elements are generic or descriptive, the amalgamation can be eligible for registration if it generates a unique commercial impression. Additionally, the USPTO examining attorney considers whether the combined term is likely to be recognized as a trademark by consumers or if it appears to be simply informational.

In conclusion, the combination of generic words to create a distinctive trademark presents a fascinating element in trademark law. It shows how creative combinations of words or symbols, which may not individually qualify for trademark protection, can be transformed into a unique and legally protectable trademark. This process underscores the importance of the USPTO’s role in ensuring that only those marks meeting the registration criteria are granted protection. For business professionals, understanding the potential of combined term trademarks is vital in developing a distinctive brand that stands out in the marketplace while ensuring legal protection under trademark law.

The Importance of Trademark Selection

Understanding the Spectrum of Distinctiveness is crucial for entrepreneurs and business owners when selecting a trademark. This trademark classification system, used in trademark law, helps to distinguish between different types of trademarks based on their inherent distinctiveness, which is a key factor in their registrability and the level of protection they can receive. The spectrum categorizes trademarks into five main types, ranging from the least to the most distinctive: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful.

  • Generic Trademarks: These are common terms used to refer to a type of product or service and not to a specific source or provider. Due to their lack of distinctiveness, generic marks can’t be registered as trademarks. An example is using “Computer” as a brand name for computers, which is too generic for trademark protection.
  • Descriptive Trademarks: These marks directly describe a feature, quality, or characteristic of the goods or services. They are not inherently distinctive and can only be registered if they acquire a secondary meaning, meaning that over time, consumers start to associate the mark with a particular source. “Cold and Creamy” for ice cream is a descriptive trademark.
  • Suggestive Trademarks: These require some imagination or thought to understand the connection to the goods or services. Suggestive marks are inherently distinctive and can be registered without needing to prove secondary meaning. “Microsoft,” suggesting software for microcomputers, is an example of a suggestive mark.
  • Arbitrary Trademarks: These involve common words but are used in contexts unrelated to their normal meanings, making them distinctive. Like suggestive marks, they are inherently distinctive and registrable without secondary meaning. “Apple” for computers is a prime example of an arbitrary mark.
  • Fanciful Trademarks: Consisting of invented words with no existing meaning, these are the most distinctive marks and receive the highest level of protection. Fanciful marks are inherently registrable without needing secondary meaning. Examples include “Exxon” for a petroleum company and “Kodak” for a photography company.

These categories provide a framework for evaluating the inherent strength of a trademark and its eligibility for protection under Trademark Law. For businesses, selecting a trademark further along the spectrum towards fanciful or arbitrary can offer greater ease in registration and stronger protection. However, even less distinctive marks like descriptive ones can become powerful brands once they achieve secondary meaning. The choice of trademark is a strategic decision that can have a significant impact on a brand’s identity and legal standing.

How To Choose A Strong Trademark That Can Be Registered

The selection of a strong, distinctive trademark is a pivotal decision for entrepreneurs and business owners, especially when aiming for registration with the USPTO on the Principal Register. A strong trademark, typically characterized by its distinctiveness, uniqueness, and non-descriptive nature, is not just a brand identifier; it’s a powerful tool in defining a business’s presence in the marketplace.

The primary advantage of a strong trademark is its distinctiveness. This quality significantly increases the chances of approval by the USPTO and plays a crucial role in distinguishing your products or services from others. A distinct trademark helps customers easily recognize and remember your brand, fostering brand loyalty and consumer trust.

Another significant benefit of a strong trademark is its reduced likelihood of being considered similar to existing trademarks. This aspect is vital as it minimizes the risk of trademark infringement disputes, which can be both costly and damaging to a business’s reputation. Moreover, it prevents competitors from using similar marks, ensuring your brand remains unique and reducing consumer confusion in the market.

From a legal standpoint, registering a strong trademark on the Principal Register offers numerous trademark benefits. It provides a legal presumption of the mark’s validity and your ownership of it across the United States, which is a powerful asset in legal disputes. Additionally, it allows you to bring lawsuits related to the trademark in federal court and potentially recover profits, damages, and costs incurred due to infringement.

Another advantage is the use of the federal registration symbol ®, which serves as a deterrent to potential infringers. It’s also possible to record a registered trademark with the U.S. Customs and Border Protection, helping to prevent the importation of counterfeit and infringing goods.

In summary, selecting a strong and distinctive trademark for registration on the Principal Register is more than just a legal formality. It’s a strategic business decision that enhances brand recognition, minimizes marketplace confusion, and offers substantial legal protections. This careful selection can be a cornerstone in building a strong and enduring brand identity.

Contact Our Charleston Trademark Attorneys

Protecting your brand is very important in today’s competitive business environment. Your trademarks are more than just symbols or words; they represent your reputation, your quality, and your commitment to your customers. Ensuring these trademarks are secure and effectively managed is a sometimes a complex process. Whether you’re a start-up looking to establish your first trademark or an established business dealing with complex trademark matters, our attorneys are committed to protecting your brand and supporting your business growth.  We invite you to contact our law firm by completing our online contact form or giving us a call.  We make every effort to respond to all inquires within one business day.