One of the requirements to obtain a trademark registration is that the mark must not be generic. A generic mark consists of generic terms, which are common words used to identify goods and services and are often listed in the dictionary. Anyone is allowed to use these terms and thus they are not registrable trademarks on either the Principal and Supplemental Registers. Examples of generic terms include “computer software” and “facial tissue”.
When a particular product or brand dominates the market, a problem known as genericide arises when the brand name becomes the generic term for the item. This can occur when the owner of trademarks or third parties use the mark improperly so that it no longer functions as a source identifier.
It is important to take action early and protect your brand by stopping other businesses from using your brand name, pairing your trademark name with a descriptive phrase such as “Jell-O® brand gelatin,” and never using the brand name in a generic fashion in advertisements or publications. Examples of trademarks that have become generic include Kleenex and Aspirin.
The examining attorney has the burden of proving that the term is generic by clear evidence. Proper sources of evidence of the public’s understanding of the term that may be introduced by the examining attorney include any competent source, such as dictionary definitions and newspapers.
Further, the applicant’s website and other third party websites are also proper sources of evidence of the manner in which the mark is used. When a term is a compound word, the examining attorney may establish that a term is generic and by producing evidence showing that each of the constituent terms are generic.
If you are facing a rejection or cancellation based on genericism and need assistance in overcoming the rejection, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining trademark registrations for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies, some of whom have over a hundred trademark applications and registrations in the US and worldwide.