Patent Poetry: when is the trademark generic? | AEON Law

Generic brands:
Will not be granted to begin with,
And can be undone

In theory, a brand can last “forever”.

For example, the winged hourglass logo of the watch company Longines, originally registered in Switzerland in 1889, is the oldest valid trademark in the international register of the World Intellectual Property Organization (WIPO). The oldest trademark in the United States still in use is believed to be Underwood’s Deviled Ham. devil logoregistered in 1870.

Other trademarks are even older, predating the modern trademark registration system. For example, Stella Artois beer claims continuous use of its trademark since 1366.

A brand can “die” if it is abandoned (no longer used commercially), and it can be “killed” if it is the victim of “gendericide”.

As Cornell Law School Explain,

The credits refer to the gradual process of a brand term become generic by use by the common individual. When a term becomes generic, the term cannot be trademarked and current trademarks cannot be applied. This process can be detrimental to businesses, but they don’t have much control over how the ordinary person refers to their branded products. For example, escalator was originally a protected trademark used to designate escalators manufactured by a specific company. Over time, the common individual used the term to refer to any moving stairs and thus lost their trademark protection. Other examples of brands that have become generic terms are light beer, mild soap, and cola.

As the International Trademark Association (INTA) explains, brands can try to avoid generics by taking the following steps:

  • Develop an “Internal Best Practices for Avoiding Genericide of ______” while the brand is still in development.
  • Prepare a standard written explanation for the correct use of your mark that can easily be distributed to third parties, such as licensees or consumers in general, in the event of incorrect use.
  • Engage an experienced research provider to monitor print, online and Internet publications to identify inappropriate uses of your trademark.
  • Consider using the ® registration symbol (or the TM/SM symbol for unregistered marks).
  • Use good judgment when approving original advertising and promotional material; such uses may inadvertently dilute your own brand by confusing the public as to its proper use.
  • Don’t forget to educate people within your organization and/or supply chain, such as distributors and resellers.
  • Keep detailed marketing records so you can prove “earned distinctiveness” if needed.

A proposed trademark may also be rejected for federal trademark registration if it is considered generic by the United States Patent and Trademark Office (USPTO).

Trademarks are meant to be “distinctive”, to distinguish the goods or services of one supplier from another. Distinctiveness is often described in terms of spectrum, from strong to weak.

Arbitrary trademarks are words or symbols in common use that are arbitrarily applied to a product or service – for example, Apple-branded computers or Amazon-branded online shopping.

whimsical trademarks are invented words, like Kodak.

Suggestive brands suggest product quality, such as London Fog raincoats.

Simply descriptive trademarks simply describe a feature or feature of the product.

Mainly geographically descriptive the brands indicate where the product comes from.

Personal name marks can be problematic because several people can have the same name.

Generic terms include words like “lite” for low calorie beer.

The USPTO used to require “clear evidence” that a proposed trademark was generic before refusing to register it. In May of this year, the the rule has been changed so that trademark examiners need only have a “reasonable predicate” (i.e. a reasonable basis) to refuse registration.

As the USPTO notes,

This revision does not change the nature or types of evidence needed to demonstrate genericity. Examining Counsel always consider the primary meaning of the term to consumers (i.e., the relevant consumers would use or understand the requested matter as indicating a class of goods or services with which it is used). Likewise, relevant sources of evidence continue to include “dictionaries, use by consumers and competitors, and any other source of evidence relating to how consumers perceive the meaning of a term”, including relevant and conclusive consumer surveys.


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