Understanding the Ineligibility of Generic Trademarks

The United States Patent and Trademark Office’s (the “USPTO”) Trademark Manual of Examining Procedure (the “TMEP”) outlines various regulations governing the registration process, and one essential requirement is that trademarks must be distinctive. A common obstacle trademark applicants face is the lack of distinctiveness of trademarks they intend to register.

Understanding Trademark Distinctiveness

Distinctiveness is a key criterion for determining the registrability of a trademark. The purpose of a trademark is to differentiate and identify the goods or services of one entity from those of others. A distinctive trademark allows consumers to associate the mark with a specific source or origin, strengthening brand recognition and consumer trust.

A trademark is categorized on a spectrum of ‘distinctiveness’ when a USPTO trademark examiner is determining whether it is registrable: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful. Understanding this spectrum is vital when assessing a mark’s registration eligibility.

Generic Marks

These are common terms used to identify a particular class of goods or services. They describe the goods or services themselves and lack distinctiveness. Generic marks cannot be registered as trademarks since they do not differentiate one source from another. An example, in its simplest form, is that “Banana” cannot be registered as a trademark by a produce company to advertise its bananas.

There are, of course, loopholes to circumvent this issue. For instance, in a 2020 case, the Supreme Court ruled that the addition of “.com” to an otherwise generic term can create a protectable trademark if consumers perceive the combined term as identifying a specific supplier’s goods or services. For example, Booking.com, a popular hotel and flight reservation website, sought to register the trademark ‘booking.com” as a brand name but was initially rejected by the USPTO. Although the USPTO determined that “booking” is the generic term for accommodation reservations, upon judicial review, the district court overturned the denial. The court held that the mark was registrable because combining the generic term “booking” with the domain name “.com” resulted in a descriptive mark. Additionally, survey evidence showed that consumers recognized ‘booking.com’ as a brand name, not merely a product category.

Descriptive Marks

These marks provide information about the goods or services but do not immediately describe them. While descriptive marks are not inherently distinctive, they may acquire distinctiveness over time through extensive use and consumer recognition. A separate analysis of ‘acquired distinction’ would apply, however, where several factors would be applied to these marks to determine whether they may be registered despite descriptiveness. However, these marks would undergo more stringent examination overall throughout the registration process.

Suggestive Marks

Suggestive marks require consumers to use their imagination or perception to associate the mark with the goods or services. They indirectly convey characteristics or qualities of the products they are registered for without explicitly describing them. These marks are considered inherently distinctive and have a higher chance of being registered.

Arbitrary Marks

Arbitrary marks have no inherent connection to the goods or services they represent. They are common words used in unrelated contexts, creating a strong sense of distinctiveness. Examples include “Apple” for computers or “Dove” for soap. These have a high chance of surviving the pre-registration distinctiveness analysis.

Fanciful Marks

Fanciful marks are entirely invented and hold no dictionary or commonly known meaning. These marks are inherently distinctive and enjoy the highest degree of protection. Some examples of registered fanciful marks include ‘Adidas”, “Haribo” and “Pepsi”.

The Non-Registrability of Generic Trademarks

The TMEP explicitly states that generic terms cannot be registered as trademarks. The rationale behind this is that granting exclusive rights to generic terms would grant a monopoly over words that should be available for use by all competitors in an industry. Allowing one entity to monopolize a generic term would stifle competition and inhibit consumer choice.

To obtain trademark registration, an applicant must demonstrate that their mark is distinctive and capable of identifying the source of goods or services. Generic terms, by their very nature, fail to meet this requirement. They describe the common name or category of goods or services and do not distinguish one brand from another. Attempting to register a generic term would be like trying to claim ownership of a universally recognized term, such as “car” or “bread.” The exception here would be if a generic term were used to describe a completely different product, as mentioned in the section above describing arbitrary marks, such as if “bread” were to be applied for registration concerning anything other than bread. This would give the mark a higher chance of registration.

Benefits of Distinctive Trademarks

Distinctive trademarks provide numerous benefits to brand owners, including an exclusive right to use, and strong brand recognition.

Registering a distinctive mark grants the owner exclusive rights to use the mark in connection with the designated goods or services. This protection helps prevent confusion among consumers and protects against potential infringement.

Expanding on this, a distinctive mark sets a brand apart from competitors, fostering recognition and loyalty among consumers. It becomes an essential element of the brand’s identity and aids in establishing a strong market presence.

This can increase the overall value of a business. The marks become valuable assets that can be licensed or assigned, generating additional revenue streams.

Contact TALG for Assistance Navigating Trademark Registration

By understanding the different levels of distinctiveness and avoiding generic terms, applicants can navigate the registration process more effectively and secure valuable protection for their trademarks. Trademark registration is a crucial step in protecting brand identity and establishing a unique market presence, but it can be a complicated process. The distinctiveness of a mark is only one component of the overall analysis a trademark must undergo before being permitted registration.

TALG has extensive experience protecting intellectual property rights and specializes in applying for and maintaining trademarks.

Contact TALG for assistance with the trademark registration process.