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What are generic trademarks?
Generic trademark registration can be used to identify products or services. A generic term might be “shoes”, which is a name for a brand of shoes. Generic trademarks are used to describe a product and can’t be registered as trademarks. These marks are not eligible for protection.
Why generic terms can’t be trademarked
Generic terms like “computer” can’t be registered as trademarks because anyone has the right use generic words to describe products they sell. The English language would be less rich and more competitive if generic terms were granted trademark rights. This rule applies to both the principal register and the supplemental register .
Add a dot com (or dot org, dot net, etc.) A suffix to a generic word is not an option for transforming generic terms in trademarks. “Hotels.com”, a hotel booking engine, tried to register its brand as a trademark. However, the Federal Circuit Court of Appeals denied its application. Dial-A-Mattress tried to register “Mattress.com”, but was denied because it is too generic for any online retailer that sells bedding and mattresses.
It is possible to combine a generic trademark with other words in order to get a trademark approval. However, the USPTO application must contain the mark and the other terms.
Strength of Trademarks
A trademark’s strength will depend on its uniqueness. These five types of trademarks are, from the strongest to the weakest:
1. Fascinating marks
Fanciful trademarks refer to words or phrases that are not intended to be used in connection with a product. This mark type is the most distinctive due to its absolute uniqueness.
1. Arbitrary marks
Arbitrary trademarks can be real words that have a meaning that is usually associated with a different product class. Apple is an arbitrary trademark because it is a real word, but the brand refers to computers and not fruits.
1. Suggestion marks
Suggestive marks hint at made-up words and indicate a product’s quality. Microsoft is an example of a company that sells software.
1. Descriptive marks
Description marks don’t just suggestive, but actually describe the product/service. If descriptive marks have a secondary meaning, companies can’t register them as trademarks.
1. Generic marks
Generic Marks are the weakest types of marks and can’t be registered in any way as trademarks.
There are two parts to the test that will help you determine if your mark has a generic meaning. You first need to determine if the mark specifies the type of goods or services. If you sell tables and wardrobes, does the mark include the word “furniture?”
Next, ask yourself if consumers are aware that the mark is used to identify the product or service you are selling. If both of these questions are answered, the mark is generic.
Understanding Genericide: How Trademarks Can Be Generic
Even strong trademarks can become generic and lose their trademark protection. When a trademark used to identify a product is used to define a group of products, this happens. It’s difficult to retain a trademark once this happens.
A company is responsible for protecting their trademark. A competitor may file an abandonment action to request the cancellation of their trademark. This is known as genericide.
The company faces obvious disadvantages from the use of genericide:
• Any competitor can use the trademark to promote their products, but it loses legal protection.
• Advertising the product becomes more difficult as the brand name has lost its distinctiveness and value.
• Many times, genericide can lead to sales losses
Conversely, if a brand name is generic, it becomes common usage and free word-of mouth advertising.
Genericide examples
Many words we use are part of our common language, but were originally trademarked. These examples are of genericide:
• Aspirin
Acetylsalicylic Acid is found in Aspirin, a pain reliever drug. Bayer AG combined two German words to trademark the term in 1917. Aspirin’s trademark status was lost in 1919. It is now used in a generic manner.
• Cellophane
Cellophane (transparent) is a concoction of “cellulose” (“transparent”) and “diaphane(transparent). The term was trademarked by Jacques E. Brandenberger, a chemist. Cellophane is now a generic term in the USA, but it still has its trademark status elsewhere.
• Escalator
The term was trademarked by Otis Elevator Co. in 1900. “Escalator”, a generic term, was made when the USPTO ruled Otis used the term in a general way in its patents.
• Heroin
Bayer AG trademarked the term heroin in 1898. This drug’s name comes from the German word “heroisch”, which is strong.
• Linoleum
Frederick Walton, Linoleum’s inventor, didn’t trademark his mark when it was first created in 1864. The invention of Genericide was quick: the term was in widespread use by the end of the 1870s.
How to Avoid Genericide
A generic brand mark can result in trademark protection and brand loss, as well as brand value and profit. To avoid genericide , there are some things a brand can do .
• After the trademark, add the word “brand” to the product packaging
This strategy is used by brands such as Poland Spring brand, Lysol brand and Deer Park brand.
• After the trademark, add a descriptor
A combination of your trademark and a descriptive phrase can help protect your brand. It makes it clear that the brand name should not be used as the generic product name.
This technique has been used by quite a few brands. Kleenex packaging states “Kleenex brand tissue”, while Jello’s label says “Jell O(r) brand gelatin”. Other examples include “Play-Doh-modeling compound” and “Via Starbucks – ready to brew”.
• Set guidelines regarding the use of your trademark
It is important to determine how your employees and you will use the trademark early. Also, when the appropriate symbol (TM) or (r) should be used.
Your trademark should never be used as a verb (“to Google”) or as a noun. Instead, use it as an adjective with a generic noun (“a Ferrari Car”). You can use your trademark plural if you have to. It is best to not use the trademark in possessive forms unless it is a trademark.
• Expand your business
Genericide can be avoided by expanding a brand’s product line. Band-Aid was originally created for adhesive bandages. However, when generic names began to appear, the brand reacted and expanded its business. Band-Aid now sells both foot care products as well as germ-killing medications under the same trademark.
• Instead of the trademark, advertise the general term
Google has banned media from using “to google” as a way to search the internet. Tylenol launched a campaign to differentiate between their brand and other acetaminophen brands. These advertisements might be used by these brands in court to show that their customers still use their trademarks in relation to their brand.
This strategy can sometimes fail. Xerox, a manufacturer of photocopiers, spent millions to advertise that Xerox is a trademark that can only be used in conjunction with a general term. The Oxford English Dictionary now lists “to xerox” as a verb.
• Your trademark should be protected against infringement
Genericide is when competitors use the trademark to promote their products. You must protect your trademark from this type of use. Even if that means suing other competitors for infringing.
Keep an eye out for outlets and media that may misuse your trademark. In this instance, it is better to contact the media directly than to file a lawsuit.
How to Cancel A Trademark that’s Became Generic
You must file a “Petition To Cancel” to have a trademark removed from the registry. This is done with the Trademark Trial and Appeal Board. The applicant must prove that the disputed trademark has been made generic and that it is a threat to the petitioner’s business.
The USPTO has a lawyer who can start the cancellation procedure. The mark is taken from the register after the applicant wins the case and loses all protection. However, commonlaw rights remain.
Companies should avoid choosing generic marks that are not allowed to be registered when selecting a trademark. As the company grows and succeeds, they will need to protect their trademark from genericide. These guidelines will ensure that the brand is strong.
Post your questions and concerns regarding generic trademarks on UpCounsel’s marketplace. UpCounsel only accepts the top 5 percent. UpCounsel lawyers are from Yale Law and Harvard Law. They have an average of 14 years of experience in law, including work for or on behalf companies such as Google, Menlo Ventures and Airbnb.