Protecting Generic Names under Trademark Law

A generic name is the common descriptive name of the product a trademark identifies. Generic names may not be protected under trademark laws. The intended trademark cannot be registered and the owner has no right to stop others from using a similar mark. Unlike descriptive marks, generic devices will not become a trademark even if they are advertised so heavily that secondary meaning can be proven in the mind of consumers. The rationale for creating the category of generic marks is that no manufacturer or service provider should be given exclusive right to use words that generically identify a product. Therefore, if a company attempts to use the name of the goods themselves, such as “Lemonade” for a lemonade drink or “Bicycle” for a bicycle, that name will not be protected because it is generic.

Tests to Determine if Mark is Generic

Different tests are used to determine whether or not a mark is generic, including the following:

One test for making a determination about whether or not a mark is generic is twofold. First, one has to identify the genus of goods or services at issue. Second, one must determine whether the relevant consuming public understands the proposed mark primarily to refer to that genus of goods or services.

Another test relies on the primary significance of a trademark. If the primary significance is to describe the type of product rather than the producer, the trademark is generic and cannot be a valid trademark. If a mark answers a buyer’s question about who it is and where it came from then it is a valid trademark, but if a mark answers a buyer’s question about what it is then it is generic and cannot be a valid trademark.

Courts have determined that when performing an analysis as to whether or not a mark is generic, it is imperative to look at the mark as a whole, rather than in parts. Thus, the composite may become a distinguishing mark even though its components individually cannot be valid trademarks.
Generic Domain Names

Marks composed of generic terms combined with domain extensions are not eligible for registration. The addition of a domain name extension to a generic term does not help an applicant when trying to register a trademark. Generic domain names cannot be registered in the Supplemental Register nor can they be registered in the Principal Register. For example, “turkey.com” for frozen turkeys is unregistrable on either the Principal or Supplemental Register.

A Valid Trademark May Become Generic

A valid trademark may become generic if the consuming public misuses the mark sufficiently for the mark to become the generic name for the product. For example, “aspirin,” “escalator,” and “shredded wheat” were former trademarks that became generic names. When a trademark becomes generic, it can be used by anyone and no longer distinguishes the trademark owner’s products from the products of other companies. It is common that people use the trademark as a generic name for a category of products when the trademarked product is the only one or one of only a few products on the market. If a court decides a trademark has become a generic name, it will declare the trademark invalid. Therefore, many trademark holders actively try to prevent people from using trademark names as generic names.

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