What is a generic mark?

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:

  1. What is the class of goods or services at issue?
  2. 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.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
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Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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2023-02-20
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2023-02-16
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Genevieve Springer
2022-09-09
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InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
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Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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