Trademarks serve a critical role in distinguishing products and services in the marketplace. However, not all terms can function as trademarks. One category that faces strict limitations under trademark law is generic trademarks. When a term is deemed generic, it is considered a common descriptor of a product or service rather than a unique identifier of a brand. The USPTO trademark rules prohibit the registration of generic terms to prevent monopolization of language and ensure fair competition in the marketplace.
What Are Generic Trademarks?
A generic term refers to words or phrases that the public perceives as the common name for a product or service category rather than a specific source identifier. For instance, terms like “Computer” for a brand of computers or “Bread” for a bakery cannot be trademarked because they describe the nature of the goods themselves rather than a particular brand. Allowing exclusive rights to such terms would hinder competitors from accurately describing their products.
The Legal Framework Surrounding Generic Trademarks
The USPTO trademark rules firmly establish that generic terms are ineligible for registration on the Principal Register. The underlying principle is that granting trademark protection to generic terms would create an unfair advantage by restricting others from using everyday language to describe their goods or services.
The Trademark Trial and Appeal Board (TTAB) has consistently ruled against registering generic terms as trademarks. A notable case involved the refusal of the trademark application for “SERIAL” in connection with an investigative journalism podcast. The Board found that “SERIAL” was a generic term for serialized storytelling and could not function as a brand identifier. This decision highlights the rigorous standards applied when evaluating generic terms in trademark law.
The Two-Part Test for Genericness
To determine whether a term is generic, courts and the USPTO trademark rules apply a two-part test:
- Identifying the Class of Goods or Services: The first step is to establish the category of goods or services that the term relates to. If the term is commonly used to describe that category, it raises concerns about genericness.
- Assessing Public Perception: The second step involves evaluating how the relevant public perceives the term. If consumers recognize the term as the common name for the goods or services, rather than as a brand name, it is deemed generic and ineligible for trademark protection.
Exceptions to Genericness: Overcoming a Genericness Refusal
While generic terms are generally ineligible for trademark protection, applicants may argue against a genericness refusal by presenting substantial evidence. In In re America Online, Inc., the applicant sought to register “INSTANT MESSENGER” for online messaging services. Initially, the USPTO rejected the application on the grounds of genericness. However, the applicant successfully overturned the refusal by demonstrating extensive marketing efforts, widespread consumer recognition, and proper trademark usage. This case illustrates that under exceptional circumstances, a term initially considered generic may still secure registration if it acquires distinctiveness.
Domain Names and Generic Trademarks
With the rise of e-commerce, a key issue in trademark law is whether a generic term combined with a top-level domain (TLD) such as .com, .net, or .org can function as a trademark. Historically, the USPTO trademark rules dictated that adding a TLD to a generic term does not transform it into a distinctive mark. However, recent legal developments have altered this perspective.
In the case of Booking.com B.V. v. USPTO, the Supreme Court ruled that “BOOKING.COM” was not generic for online hotel reservation services. The Court emphasized that consumers recognized “BOOKING.COM” as a brand rather than a general category of services. This landmark decision overturned prior rulings that automatically deemed generic + .com combinations as unregistrable.
The reasoning behind this shift is that consumers perceive domain names as unique identifiers. Since only one entity can own a particular .com domain at a time, the presence of a TLD can contribute to source identification. This ruling has significant implications for businesses seeking trademark protection for domain names incorporating generic trademarks.
Previous Cases of Generic Trademark Rejections
Several cases reinforce the strict stance against generic trademarks:
- HOTELS.COM: The application for “HOTELS.COM” as a trademark for hotel reservation services was denied. The court ruled that “Hotels” was a generic term, and the addition of “.com” did not create distinctiveness.
- MATTRESS.COM: Similarly, “MATTRESS.COM” was deemed generic for online mattress retail services. Despite significant brand recognition, the term was found to be descriptive of the product rather than an indicator of its source.
However, the Booking.com decision suggests that future applicants may have stronger arguments when seeking registration for similar domain name-based trademarks, provided they can demonstrate that consumers view the term as a brand rather than a generic descriptor.
The Role of Secondary Meaning in Trademark Protection
For a term that is initially descriptive (but not generic), acquiring secondary meaning can provide a pathway to trademark protection. Secondary meaning occurs when consumers begin to associate a term with a specific source rather than its ordinary meaning. Courts consider several factors when evaluating secondary meaning, including:
- Advertising and Marketing Efforts: Extensive promotional campaigns can help establish brand recognition.
- Consumer Surveys: Evidence showing that a significant percentage of consumers associate the mark with a particular company.
- Sales and Market Share: High sales figures and market penetration can support a claim of acquired distinctiveness.
- Media Coverage: Unsolicited press and public awareness contribute to secondary meaning.
- Attempts to Copy the Mark: If competitors attempt to use the mark, it suggests strong brand recognition.
- Exclusive Use Over Time: Consistent use of the mark for an extended period strengthens its association with a specific company.
Practical Considerations for Businesses
Businesses looking to secure trademark protection should carefully evaluate whether their chosen mark is at risk of being deemed generic. Here are key strategies to consider:
- Choose Distinctive Branding: Opt for arbitrary or fanciful trademarks that have no inherent connection to the goods or services. For example, “Apple” for computers is highly distinctive.
- Avoid Common Industry Terms: Using widely recognized industry terminology as a trademark increases the risk of rejection.
- Monitor Competitor Use: Consistently enforce trademark rights to prevent genericide (when a mark loses distinctiveness due to widespread generic use).
- Leverage Marketing and Branding: Establish strong brand recognition through advertising, media coverage, and consumer engagement.
Conclusion
Understanding the principles of trademark law and the USPTO trademark rules regarding generic trademarks is crucial for businesses seeking brand protection. Generic terms, by definition, cannot function as trademarks because they describe a category of goods or services rather than distinguishing a specific source. However, legal precedents such as Booking.com have demonstrated that under certain conditions, a term initially considered generic may achieve trademark protection if it acquires distinctiveness.
For businesses navigating the complexities of trademark law, consulting with an Intellectual Property Attorney can provide valuable guidance. Ensuring that a chosen trademark is distinctive from the outset can prevent costly legal battles and enhance long-term brand recognition. As the landscape of USPTO trademark rules evolves, staying informed about emerging trends and case law developments is essential for securing and maintaining trademark rights.