Generic Trademarks

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 What Is Intellectual Property Law?

In short, intellectual property law is the set of laws that provide certain privileges and protections for owners and inventors of certain intellectual property. The purpose of intellectual property laws are to encourage and protect new ideas, the creation of new technologies, as well as artistic creativity for economic growth.

Thus, with the protections granted by intellectual property laws, an owner of a piece of intellectual property will have the confidence that their creative work and ideas can be protected.

The following is a list of different types of intellectual property that falls under the umbrella of intellectual property law:

What Is a Trademark?

In legal terms, a trademark is any word, design, phrase, logo, or other symbol that is used to identify a product and/or the source of a product. Therefore, a trademark is essentially a mark that creates an identity for the business in which it is utilized.The main purpose of a trademark is usually to distinguish one product and/or manufacturer from others. Trademarks can be owned by individuals, partnerships, or any other legal entity, including a corporation. Some of the most popular trademarks are recognized worldwide, such as Mcdonald’s golden arches, apple, coca-cola’s logo, etc.

It is important to note that in order to qualify for the full amount of protections granted to trademark owners in the United States, trademarks must first be registered. A trademark can be registered with the U.S Patent and Trademark Office (“USPTO”). Once the mark is validly registered with the USPTO, the trademark will be protected for an initial period of 10 years. During that initial 10 year period, the trademark owner will be required to file updates with the USPTO to show that the trademark is still in use. Not all trademarks can be registered with the USPTO.

The following is a list of reasons why a trademark may not be allowed to be registered with the USPTO:

  • If the trademark is identical or similar to an already existing trademark or related service/goods;
  • If the trademark is generic;
  • If the trademark is on the list of prohibited trademarks maintained by the USPTO or on the reserved list of trademarks maintained by the USPTO; or
  • If the trademark is overly descriptive to qualify for protection.

Once again, after a trademark is validly registered with the USPTO, the trademark owner will be protected against other individuals or businesses who wish to copy or duplicate their trademark. Additionally, the entire United States will be considered to have been put on notice that the specific trademark is not available to be registered and is in use. Thus, future applicants will not be allowed to register the same or sufficiently similar mark.

It is important to note that before registering a trademark, a prospective applicant should conduct a thorough search through the USPTO’s database in order to determine whether any other individual or entity is already using the same or similar trademark. It is important to not copy or utilize another’s registered trademark, because doing so could result in you being sued by that trademark’s owner under the theory of trademark infringement. However, there are instances in which a business or person can use a trademark, such as when the trademark becomes generic.

When Does a Trademark Become Generic?

Once again, prospective applicants for trademark will not be able to register and receive protections for a trademark that is considered generic. A trademark becomes generic when the mark no longer identifies a particular manufacturer or source of a product, but rather a generic good. Thus, when a trademark becomes so common that it simply signifies the type of goods it represents, it is considered to become generic and can no longer be protected by trademark.

For example, the following is a list of common brands that over time have become generic:

  • Escalator;
  • Elevator;
  • Linoleum;
  • Aspirin; and
  • Zipper.

As can be seen from the list above, at one point in time all these words represented a specific maker of that type of product. However, all of the words above eventually became so common and so readily identified with the product, that they lost their significance as trademarks. Many trademarks that become generic trademarks often become generic because of their popularity of use and their control of the market for a certain product.

How Can I Keep My Trademark from Becoming Generic?

In order to keep a trademark from becoming generic, a trademark owner has to take steps to prevent genericization. Some of the steps that trademarks owners may take to reduce the risk of their trademark becoming generic include:

  • Educating consumers and businesses on the appropriate use of their trademark and making sure no one is using their trademark in a generic way. Typically, this is done through a public relations campaign;
  • Taking aggressive measures such as suing media companies from using their mark in a generic way, such as Google ensuring that the mark did not become a generic word for searching something on the internet; and
  • Utilizing generic descriptors, such as adding a word after the trademark that describes the product in general. For example:
    • Kleenex adds the work “tissues” after the Kleenex mark in order to lessen the risk of Kleenex becoming a generic mark;
    • Velcro also adds the works “brand fasteners” after their mark to prevent genericization; and
    • Bandaid added “brand” after their mark to help define their mark as a trademark rather than a generic term for the product itself.

If I Take Proper Precautions, Can I Protect My Trademark?

Once again, it is up to the trademark owner to ensure that their mark remains protected by taking actions against trademark infringers, and ensuring that their mark doesn’t become generic through use and familiarity over time. Trademark owners taking proper precautions can help preserve their trademark, but ultimately it will be up to the public to decide whether or not a product has become generic.

Thus, even if a trademark owner puts out ads informing the public that their mark signifies a brand and not a type of product, if the public perceives the mark as a signifier of a type of product, they will likely lose trademark protection.

The following is a list of some common ways that a court will determine if the public sees a mark as generic:

  • The court will conduct consumer surveys to determine whether the public views the mark as a brand or a type of product;
  • The court will research how the mark has been and is being used in publications; and
  • The court will research how the mark is used in everyday public speech.

Do I Need A Lawyer For Help With Generic Trademarks?

If you have any questions, concerns, or disputes associated with generic trademarks, you should consult with an experienced trademark attorney in your area. An experienced intellectual property attorney will be able to help you understand your legal rights and options as a trademark owner according to both federal law and the laws of your specific state.

An attorney will also be able to file a civil lawsuit against any party that is infringing upon your trademark or causing your mark harm by using it in a generic way. Finally, an attorney will also be able to represent you in court, as needed.

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