Genericism: To Be or Not To Be !...

It is said that a trademark dies when it is determined to be generic as the common name for the goods or services it represents. Such is the case with aspirin and escalator in the U.S.. This would apply only with respect to the goods commonly associated with this term. Thus, if a bar calls itself "aspirin" such use would not be generic. Likewise, if a career based website calls itself "Escalator" it is not going to be found to be generic.

Nevertheless, it is very important to be careful not to fall into the trap of adopting a merely descriptive term lest you find yourself in generic quicksand. An arbitrary mark, e.g., one that does not describe your goods and/or services, is preferable from both a use and registration perspective.

In the meantime, here are a few resources to help you better understand what it means to be generic.

I. Trademark Manual of Examining Procedure (TMEP):

1209.01(c) Generic Terms
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.

When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. The disclaimer does not render an otherwise unregistrable generic mark registrable. See TMEP §§1213.06 and 1213.08(c).

http://tess2.uspto.gov/bin80/gate.exe?state=hrpm0f.2.9&f=doc#tt_T120901c.1209..0

1209.01(c)(i) Test

There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the primary significance that the term would have to the relevant public..........


II. U.S. Patent and Trademark Office (USPTO):

The Glossary at uspto.gov defines "generic term" as:
"terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. Examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries."

III. List of generic and genericized trademarks:

From Wikipedia, the free encyclopedia

http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks