A generic term is the common descriptive term of a class of goods or services referred by the consumers. According to the United States Patent and Trademark Office (“USPTO”), generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.
A generic term can’t ever be trademarked as they fail to fulfill the primary function of a trademark i.e. to identify a brand’s product and distinguish them from its competitors. See What is the impact of trademark generalisation?
To identify if a trademark has suffered generalization, a two-part test known as the “(Marvin) Ginn test” has to be conducted:
- What is the genus of the goods or services at issue?
- Is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?
While proving that a trademark has become generic, it is not necessary to prove that the relevant public uses that term to refer to the genus. Instead, it is important to prove that the relevant public understands that term to be a generic term for referring the genus.
You need to prove three important factors when you decide to cancel a trademark due to genericness:
- Use on the Internet – You must prove that how the trademark is being currently being used on the internet or by the general public which is indicative of its generalization. You need to gather evidence concerning this and then present it to the authorities.
- Use by the Registrant – If the company that has registered the trademark is using it in a manner that is generic then you can challenge it. You need to prove this by presenting enough evidence.
- Use of a trademark as an identification of source – You can challenge a trademark if the registrant has filed it for a word that is indicative of the source of the goods. For example: If the registrant has filed a trademark “automobile” for a class of vehicles then it can be challenged on the grounds of “genericness”.
Companies can take steps to protect their brands. See How to protect against genericide?
There is a long list of U.S. trademarks that have been canceled due to genericide: ASPIRIN, BRASSIERE, ETICKET, ESCALATOR, LINOLEUM, THERMOS, TRAMPOLINE and ZIPPER, to name just a few.
The risk of genericide is highest for products that introduce a new technology to the marketplace, as consumers may quickly come to associate the product’s brand with its functionality and begin to use the brand to describe the general class of products to which it belongs. This risk is particularly pronounced for products that are patented, such that there is only one product/brand on the market during the period of patent exclusivity. This is the “trap” into which Bayer fell with respect to its patented painkiller “aspirin”.
As explained by Professor John Ingram,
“during the life of the patent Bayer made no attempt to establish in the minds of the public some generic name for the product other than "aspirin." In fact, they welcomed the public acceptance and use of "aspirin" as the name of the drug. By the time the patent expired, it was too late. "Aspirin" was generic.”
A registered mark may be challenged as generic via one of four procedural routes:
- The mark, once allowed by the PTO, will be published in the Official Gazette, following which any person “who believes that he or she would be damaged by the registration of [the] mark” may, within thirty days after publication, initiate an inter partes opposition proceeding at the Trademark Trial and Appeals Board (TTAB). At the opposition proceeding, any ground for rejection of the mark may be raised including that the mark lacks distinctiveness due to genericism.
- Under Section 14(3) of the Lanham Act, any person who believes that he or she would be damaged by the registration of a mark may petition to cancel a registration at any time “if the registered mark becomes the generic name for the goods or services”.59
- In private litigation, one party, usually as a defense to an allegation of infringement, may counterclaim that an asserted mark is invalid as generic.
- A public agency such as the U.S. Federal Trade Commission (FTC) may petition the PTO to cancel a trademark as generic.
While each of these mechanisms for challenging a mark as generic requires different procedural steps, the substantive requirements for a finding of genericism do not vary greatly from one such mechanism to another. In each case, whether a challenged mark is generic or descriptive is a question of fact.
A party bringing a cancellation action on the basis of genericism bears the burden of proving genericide by a preponderance of the evidence. The challenger’s task is made more difficult because the holder of a registered trademark, after meeting its initial burden in registration, benefits from a presumption of validity. Despite the number of well-known marks that have fallen to genericide, not all genericism challenges are successful. In some cases, the evidence presented does not meet the required standard for showing that a challenged mark has taken on generic meaning in the public eye. For example, a San Diego jury found in 2017 that Comic-Con International’s mark COMIC-CON was not generic after a challenge by Salt Lake City Comic Con, a group accused of infringing the mark. In reaching its verdict, the jury seemingly relied on evidence including a survey showing that 70% of respondents considered COMIC-CON to be a particular brand rather than a generic description of an event. In other cases, the owner of a challenged mark may show that the mark, even if it has taken on a generic meaning, is not being used in a generic manner. The most notable example of this approach arose in the highly-publicized genericism challenge to the mark GOOGLE. In that case, the challenger petitioned the USPTO for cancelation of the GOOGLE mark on the ground that “the word ‘google’ is primarily understood as ‘a generic term universally used to describe the act of internet searching’” and that “verb use constitutes generic use as a matter of law”. But, as noted above, this challenge was unsuccessful, as the verb “google” was found to relate specifically to Internet searches conducted using Google’s proprietary search engine.
Unlike other cancelation proceedings – resulting, for example, from a mark owner’s failure to use a mark in commerce – a finding of genericism will prevent others from registering the generic term as a mark. Thus, like an abandonment of rights under patent or copyright law, a finding of genericism generally has an estoppel effect on third parties, re-committing the generic term to the public.