Trademark Law: Generic Terms

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My next couple of posts are going to focus on the types of words that can and can’t be trademarked. This post centers on generic terms. In short, a generic name of a product can never function as a trademark to indicate origin. The terms “generic” and “trademark” are mutually exclusive. If a term is generic, it can never function as a mark to identify and distinguish the products of only one seller. As the Seventh Circuit noted, “[a] generic term is one that is commonly used as the name of a kind of goods. …unlike a trademark, which identifies the source of a product, a generic term merely identifies the genus of which the particular product is a species.”

As such, a seller cannot appropriate a previously used generic name of a thing and claim exclusive rights in it as a trademark for that thing. Likewise, if a seller develops trademark rights in a term which the public then appropriates as the name of a product, the mark may then be declared to be a generic name and all trademark rights may cease. Therefore, once declared to be a generic name, the designation is free for all to use. This can occur when the owner of a trademark fails to police the mark, resulting in widespread usage by competitors leading to a perception of “genericness” among the public. Sometimes, a term intended by the seller to be a trademark for a new product is taken by the public as a generic name because the public has no other word to use to name the new product or service. This was the case for words such as “aspirin” and “cellophane.”

Because a generic term is not capable of distinguishing the source of one good or product from another, it cannot be registered as a trademark or service mark on the Principal Register or the Supplemental Register. Although the Supplemental Register is designed for noninherently distinctive designations (such as descriptive words) which are capable of achieving trademark status by gaining secondary meaning and distinctiveness, a generic mark would never qualify because generic terms can’t become trademarks merely by the acquisition of secondary meaning.

To properly be called an unprotectable generic name or term in trademark law, the designation must be the name of the same product or service for which it is used to identify the source of. Certainly, a term can be a generic name of one thing but be a trademark for some other product. For example, “APPLE” is a generic name for a fruit, but it is a trademark for computers. Another example is “IVORY,” a generic name for the material forming the tusks of elephants but a trademark for soap sold by Proctor & Gamble. The examples go on and on, including “BICYCLE,” “CATERPILLAR,” “SANDALS” and “SHELL.” Therefore, you can’t argue that because the designation is a generic name for something, it can’t be a trademark for anything.

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