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Trademarks vs. Generic Terms |
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1. What is meant by generic term?Generic terms are common words or terms, often found in the dictionary, that identify products and services and are not specific to any particular source. It is not possible to register as a trademark a term that is generic for the goods/services identified in the application. If a trademark becomes generic, often as a result of improper use, rights in the mark may no longer be enforceable.2. Are generic terms considered a category of trademarks?In assessing their suitability as trademarks, words can be divided into five categories. These categories range from fanciful, invented words, which are typically strong trademarks, to generic terms, which are not protectable at all. The stronger the mark, the more protection it will be given against other marks.The categories, ranked in decreasing order in terms of strength, are:
a. Fanciful Marks—coined (made-up) words that have no relation to the goods being described (e.g., EXXON for petroleum products).
b. Arbitrary Marks—existing words that contribute no meaning to the goods being described (e.g., APPLE for computers).
c. Suggestive Marks—words that suggest meaning or relation but that do not describe the goods themselves (e.g., COPPERTONE for suntan lotion).
d. Descriptive Marks—marks that describe either the goods or a characteristic of the goods. Often it is very difficult to enforce trademark rights for descriptive marks unless the mark has acquired a secondary meaning (e.g., SHOELAND for a shoe store).
e. Generic Terms—words that are the accepted and recognized description of a class of goods or services (e.g., computer software, facial tissue).
3. Can a fanciful or arbitrary trademark become a generic term?Yes. Trademark history is filled with distinctive marks that have become generic over time. Aspirin, cellophane, margarine, videotape, escalator, and linoleum are just a few generic terms that started life as fanciful or arbitrary marks.4. How does a trademark become generic?Ironically, product popularity and the trademark owner are often the culprits. If a trademark is used properly, it is likely to remain the exclusive property of its owner; however, once improper advertising and labeling start to cause consumers to use the mark as the “name” of the product or service, regardless of the source, the trademark loses its distinctiveness. The term “genericide” is sometimes used to describe the process where the trademark owner actually participates, often unknowingly, in the destruction of the distinctiveness of the trademark.5. How can a trademark owner prevent a trademark from becoming generic?There are a few handy rules to remember in protecting a trademark:
- Enforce correct grammatical usage. A trademark is meant to be used as an adjective; unfortunately, it is often compromised by being used as a noun or a verb.
- Correct usage: “I need a KLEENEX tissue.”
- Incorrect usage: “I need a KLEENEX.”
- Make sure to use the product’s generic name with the trademark. If the mark is an adjective, the generic name of the product is the noun. The owner should use the generic name of the product in association with the trademark (e.g., APPLE computers, XEROX photocopies, EXXON gasoline). A successful example of warding off trademark genericide is the campaign conducted by Xerox Corporation to encourage users to refer to “photocopying” documents, not “Xeroxing” documents.
- Have the trademark stand out from surrounding text. Consumers should be able to easily distinguish between trademark terms and generic product names or descriptive text in product labels or in advertising.
- Use a trademark notice. It is important to provide public notice of trademark rights for registered and unregistered marks alike. The use of ® with a registered trademark, and ™ or SM to indicate the significance of a trademark or service mark, respectively, is an effective, but commonly missed, opportunity. (See, for example, Marking Requirements (U.S.))
- Avoid all variations. Variations on a trademark can signal to the consuming public that improper usage is okay. It is not prudent to allow spelling changes, abbreviations, plurals, or apostrophes with the trademark, or to combine it with other words or marks.
Additional ResourcesFor more information regarding trademark proper use, visit the Presentation portion of www.inta.org to view the following:
- Understanding Trademarks
- Proper Use
- Funeral for a Brand: How Trademarks Become Generic
This fact sheet is intended to provide general information on generic words. Full advice on choosing strong trademarks and protecting your trademark from becoming generic should be sought from local trademark attorneys.
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