Yesterday, the Trademark Trial and Appeal Board (TTAB) upheld a ruling on a generic trademark, and in the past year or so, a number of generic trademarks have been refused for registration. What is a generic trademark and why can’t a business owner register a generic trademark? To answer that question, it’s important to first understand the different types of trademarks and how they are categorized.
Types of trademarks
Trademarks are categorized according to their strength. Fanciful trademarks enjoy the greatest scope of protection because these are coined (made up) terms that prior to being adopted as a trademark never existed in the English language. Examples of these trademarks are EXXON or KODAK. The next category are arbitrary trademarks. These are terms that are arbitrarily applied to the goods and services for which they are used. APPLE computers is the most famous example, but other examples include KIND snack bars and BLACKBERRY devices. The last category eligible for trademark protection are suggestive trademarks. Suggestive trademarks are evocative of the goods and services, but not descriptive of them. COPPERTONE suntan lotion is the evergreen example. When you use COPPERTONE suntan lotion as directed, you hope that your skin will have a copper tone, but COPPERTONE does not describe a quality, characteristic or ingredient of the suntan lotion. Similarly, WEAREVER pots and pans is another example of a suggestive trademark for the same reasons. These are the only trademarks entitled to protection on the Principal Register of the USPTO.
Generic trademarks are never entitled to protection, and descriptive trademarks may not be registered on the Principal Register without what is called “acquired distinctiveness” under the law. Acquired distinctiveness means that you are the only one that has continuous and exclusive use of the trademark and can be acquired through time or extensive use. A descriptive mark is one that describes a quality, characteristic, feature or ingredient of the applied for goods and services. And since this is a legal conclusion, marks held to be descriptive are terms such as THE JOINT for restaurant services, THE SALAD STATION also for restaurant services, YOUR CLOUD for cloud computing services, THE BABYSITTING COMPANY for caregiving services. Often, business owners want to “describe” what they do with their branding, but resist this urge, since in the unlikely event you can register a descriptive mark, it is nearly impossible to enforce a descriptive trademark from third party infringers.
A generic trademark is incapable of functioning as a trademark under any circumstances. Refusals for genericness are on the rise. The TTAB is the administrative body within the USPTO that hears trademark cases and determines which marks are entitled to registration when trademark applications have been refused by the examining attorneys. For issues of genericness, there is a two-step inquiry the TTAB considers: (1) what is the category or class of goods/services and (2) does the relevant purchasing public understand the term to be primarily refer to the goods/services? If the answer to both of those questions is yes, then the mark is incapable of functioning as a trademark. In its most basic form, BREAD is generic for BREAD; FRUIT for FRUIT and so on. But, in recent years, the following marks have been held by the TTAB to be generic: POND POTS for fabric containers for growing plants; THE CORPORATE LAW GROUP for legal services; SKINNIBELT for belts; ROSÈ for beer-based mixed beverages; and yesterday VIRTUAL INDEPENDENT PARALEGAL for paralegal services.
Before you adopt a new trademark for your business, be sure to consult with a qualified trademark attorney to ensure that your trademark is eligible for trademark protection. Even if you have chosen a descriptive trademark, a qualified trademark attorney may be able to help provide tips to help strengthen your mark. If you require assistance with your trademark needs, please contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a focus on trademarks and copyrights, as well as advertising issues related to promoting clients’ brands. Stacey has been recognized by her peers as a Super Lawyer® for her outstanding knowledge and services in intellectual property law. She can be reached at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities™, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be efficient and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.