What is a generic mark?
A generic mark is a word understood by the public as the common term for a product or service. For example, the word “apple” would be generic for the fruit. There is no more common term to refer to the apple fruit than simply “apple.” However, the term “apple” would not be generic for non-fruit items such as electronic devices.
What is the test for determining if a term is generic?
According to TMEP § 1209.01(c)(i), the test for whether a term is generic involves comparing two pieces of information:
- What is the class of goods or services at issue?
- What is the meaning of the term?
If the primary significance of the mark to the relevant public refers to the class or category of goods (e.g., “apple” for the fruit), then the term is generic.
Is a term generic because it is common or popular?
Not necessarily. The popularity of a name or phrase does not necessarily make it generic. You must also consider the goods or services to be offered under the mark. A name that is generic for one type of product may be completely arbitrary (thus protectable) for other types of products or services.
Can generic marks be registered?
No, generic marks cannot be registered. Common sense would tell us that people ought to be able to freely use certain terms to refer to particular goods and services.
Furthermore, keep in mind that the purpose of a trademark is to indicate the source of goods or services. A generic name is incapable of indicating source.
If a mark is not generic, is it registrable?
Even if you can show that a mark is not generic, it would not automatically become registrable. It is highly probable that a non-generic mark may still be merely descriptive. Merely descriptive marks have hurdles to overcome to reach registration.
What if one of the words in a mark is generic?
It is common for a trademark to consist of multiple words, one or more of which may be generic. In such cases, the USPTO will likely require a disclaimer of the generic term, meaning that you would not claim any exclusive rights to the disclaimed portion of your mark.
If you are applying for a design mark such as a logo and all the words in the logo are generic, it is possible that the trademark examining attorney may require a disclaimer of all the wording. What you would be left with is a registration protecting the design aspects of the mark, but not the wording.