Trademark protection is never available for generic names. They are terms or symbols that express the kind of good or service being provided. The terms “modem” and “email” are both generals like “cereal,” a grass whose edible portion is utilized as a morning meal. A wide range of companies can produce cereal, and each is free to refer to its product as “cereal.” In the United States, generic phrases cannot be protected by trademark law because doing so would be equivalent to conferring a monopoly on the good.
What distinguishes a generic mark from a descriptive mark? A descriptive mark may develop a secondary, verifiable meaning in customers’ minds. A generic mark that refers to a class of goods or services cannot take on a secondary meaning. For instance, while “accounting firm” is a generic word for a certain type of service, it cannot be registered as a service mark on its own. It cannot be given a secondary meaning associated with only one accounting business.
How Does a Valid Trademark Become Generic?
A trademark can turn generic, but a generic phrase cannot become a trademark. Ironically, the likelihood that a trademark will become generic and the trademark owner will no longer have the exclusive right to use and defend the name increases with the degree of success of the trademark owner. A trademark may become “genericized” if consumers associate it with a class of goods or services rather than a specific brand.
Consumers turned aspirin, yo-yos, and cellophane into generic versions by using the trademarks incorrectly to refer to these goods. Despite their attempts to monitor the use of the marks, their respective owners (Bayer AG, Dupont Cellophane Co., and Duncan Toys Co.) lost their trademark rights.
The trademark Xerox is usually cited as an example of a brand that was once in danger of generic status due to overuse. To prevent trademark infringement, Xerox had to promote the usage of “photocopying” rather than “Xeroxing” among customers. As of right now, the mark is still registered as a trademark.
Owners of trademarks should keep in mind to insist on using proper grammar in their promotional materials. Marketing materials should, for instance, specify “Make photocopies” rather than “Make Xeroxes” or “Use Apple Computers” rather than “Use Apple” to prevent misunderstandings. The product’s general name serves as the noun in a statement about it, and the mark should be employed as an adjective.
Using trademark notifications and making it visually clear for customers to distinguish between trademark terms and generic product names in any documentation linked with the product are further strategies to prevent a trademark from becoming generic. A trademark owner should also prevent trademark variants, such as those made with apostrophes, acronyms, or spelling alterations, as these tell the public that misusing the mark is permissible.
It is sometimes impossible to “save” or stop a mark from becoming generic. The actions taken by a trademark owner have no bearing on whether a trademark has become generic. For instance, the thermos firm put a lot of effort into preventing the general public from using “thermos” in a generic sense, but after the general public had appropriated the word, the owner’s actions had little impact on whether the phrase was used in that sense. It’s crucial to seek advice from skilled trademark attorneys since a marketing campaign or an effort to police the use of the mark might backfire. You can utilize the claim that the mark has become generic to fight a lawsuit if you are charged with violating a trademark for a product whose name is often used to refer to a category of goods or services rather than a specific competitor’s goods or services. By bringing legal action against a federally registered trademark you think has turned generic, you may also adamantly request its revocation.