You can’t google it. You also can’t xerox a xerox. Still. Generic Trademarks.

by | Nov 14, 2013 | Trademark Law

Generic Trademarks.

A generic term is not able to be protected as a trademark and is affording no trademark rights or trademark protection.

This is unlike the other types of phrases or words that are afforded trademark protection.

  • Fanciful Marks (these are strong trademarks because these made-up words are created for the trademark only)
  • Arbitrary Trademarks (generally, these are common terms used in an uncommon way for the trademark)
  • Suggestive Marks
  • Descriptive Terms (which can be trademarks with secondary meaning and be registered on the Supplemental Register)

Generic marks are “ ‘the common name of a product’ or ‘the genus of which the particular product is a species ….’ ” OBX-Stock, Inc., 558 F.3d at 340. “Generic marks lie at the least-protected end of the spectrum of distinctiveness because such marks can never serve as valid service marks [or a trade mark].” Zinner v. Olenych, 108 F. Supp. 3d 369, 380 (E.D. Va. 2015) (Davis, C.J.).

If a trademark is not registered, then the plaintiff needs to prove that the trademark is distinctive and not generic.

The question of where along the distinctiveness spectrum a given mark lies is a factual one, Dayton Progress Corp. v. Lane Punch Corp., 917 F.2d 836, 839 (4th Cir. 1990), and the burden to demonstrate the distinctiveness, and thus validity, of an unregistered trademark rests on the party asserting ownership rights in the mark. Shammas v. Rea, 978 F. Supp. 2d 599, 606 (E.D. Va. 2013); see also Am. Online, 243 F.3d at 819 (“[Plaintiff] has not registered [its mark] with the PTO, and therefore it must carry the burden of establishing the validity … of the mark as part of its larger burden in a trademark infringement action.”). To satisfy that burden, the party asserting common law ownership rights must establish the mark’s distinctiveness by a preponderance of the evidence. Georgia Pac. Consumer Prod., LP v. Von Drehle Corp., 618 F.3d 441, 451 (4th Cir. 2010).  All of these case decisions come from a Federal Circuit Court of Appeals.

Generic Trademarks Cannot be Registered

Genericide

Notably, marks that were once protectable as arbitrary, fanciful or suggestive may nonetheless become generic, and thus unprotectable, through the process of “genericide.” Am. Online, Inc. v. AT&T Corp., 243 F.3d 812, 821 (4th Cir. 2001). “Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source.” Elliott v. Google, Inc., 860 F.3d 1151, 1156 (9th Cir. 2017). Well-known victims of genericide include Thermos, Aspirin, Cellophane and Escalator. Id.; Am. Online, 243 F.3d at 821.

Do you remember the ad campaign that said “You can’t xerox a xerox on a xerox”?  This was created because Xerox feared its trademark was becoming generic.  Xerox monitored its trademarks and helped to restore their value and legal status.

Google is now beginning to take those very same steps.  Google has been sending letters to media organizations to state that its trademark is not a verb. So, someone cannot say “Google it for me” or “I googled it and here’s what I found.” Those of us who are fans of sports commentator and new (reluctant) Monday Night Football announcer Tony Kornheiser are used to hear him call computers “Google Machines” in searching for something on the Internet. My friend Vicki jokes that she gets help from “Professor Google” in searching. Both of those are good uses of the word “Google” to search the Internet. Why?

In trademark law, the trademark must NOT be a generic word. You cannot register “ball” as a trademark for a ball. It’s generic. There is no Beer-brand beer. Even to your eyes and ears, it is somewhat silly to say that. If a trademark turns into a generic word, then the owner loses all rights.

(And now, a boring legal citation on the topic. A mark is deemed to be abandoned when “any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.” This is USC Section 1127.)

Turning “Google” into a verb meaning “to search the Internet,” which Merriam-Webster has accepted into the language means that there is no longer a unique link between the trademark and the services provided. That is why marks are registered in the first place. A company wants to protect not only the names it has chosen, but also the quality of the product. A generic word strips that connection that ordinarily would not be there.And don’t forget, you may make a photocopy of your document on your Xerox-brand copier.

Lessons from cases decided in federal court:

How does a defendant argue that plaintiff’s trademark has only generic status?

Generic marks are not capable of receiving protection because they identify the product, rather than the product’s source. See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). “Generic terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic.” Id. Merely descriptive marks, which describe the qualities or characteristics of a product, may be registered only if the holder of the mark shows that the mark has acquired distinctiveness through secondary meaning. Id.

To determine whether a term has become generic, we look to whether consumers understand the word to refer only to a particular producer’s goods or whether the consumer understands the word to refer to the goods themselves. Park ‘N Fly, 718 F.2d at 330. If the buyer understands the word to refer to the source of the goods, the term is not generic. However, if the disputed term is “identified with all such goods or services, regardless of their suppliers, it is generic.” Id. (quotation marks and citation omitted).

“Federal registration of a trademark endows it with a strong presumption of validity. The general presumption of validity resulting from federal registration includes the specific presumption that the trademark is not generic.” Coca–Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254(9th Cir.1982) (citations omitted). This presumption of validity extends to the most salient feature of the mark, the words “micro colors.”

Courts recently discussed the nature of that presumption in Tie Tech, 296 F.3d at 782–83. Citing the wording of 15 U.S.C. § 1115(a), the trial court stated:

Validity … is a threshold issue. On this point, the plaintiff in an infringement action with a registered trademark is given the prima facie or presumptive advantage on the issue of validity, thus shifting the burden of production to the defendant to prove otherwise…. Or, to put it as we did in Vuitton [et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769 (9th Cir.1981)], the defendant then bears the burden with respect to invalidity.

The question then becomes what clear evidence must be produced to overcome the presumption. The federal district court noted in Tie Tech that this type of issue is generally viewed as an intensely factual issue, that if the challenger “can demonstrate through law, undisputed facts or a combination thereof that the mark is invalid [generic] the [trademark holder] [will lose].” Id.

A trademark use or a trademark registration cannot be proven to have become generic without undisputed facts.

“MOKE” is a Generic Term.

Commercial context surrounding use of mark “MOKE” supported finding that mark was generic and ineligible for registration under Lanham Act.

Summary of Moke America LLC v. American Custom Golf Cars, Inc.

Court: United States District Court, Eastern District of Virginia, Richmond Division
Date: May 3, 2023
Citation: 671 F. Supp. 3d 670

Background:

Moke America LLC (Plaintiff) and American Custom Golf Cars, Inc. (Defendant) were involved in a trademark dispute concerning the use of the term “Moke” in connection with electric golf carts and similar vehicles.

Key Issues:

  1. Genericism: Whether the term “Moke” is generic for the type of vehicles in question.
  2. Trademark Infringement: Whether the defendant’s use of “Moke” constitutes trademark infringement.

Court’s Analysis:

  • Genericism: The court examined whether the term “Moke” has become generic, meaning it is commonly understood by the relevant public to refer to a general category of products (electric golf carts and similar vehicles) rather than a specific brand.
  • Evidence Considered: The court considered various forms of evidence, including:
    • Historical usage of the term.
    • How the term “Moke” is used in the industry and by consumers.
    • The extent to which “Moke” has been used to describe a specific brand versus a general type of vehicle.
    • Surveys and expert testimony.
  • Trademark Rights: The court also evaluated whether Moke America LLC held a valid trademark and whether the defendant’s use of “Moke” infringed upon this trademark by causing consumer confusion.

Decision:

The court determined that the term “Moke” had become generic for the category of electric golf carts and similar vehicles. As a result, Moke America LLC could not claim exclusive rights to the term under trademark law.

Implications:

  • Loss of Trademark Protection: The ruling signifies that once a term becomes generic, it loses trademark protection, allowing competitors to use it without facing legal repercussions.
  • Industry Impact: This decision impacts how companies in the vehicle and related industries approach branding and the protection of their trademarks. Companies must ensure their trademarks do not become generic through common use.

Conclusion:

The court ruled in favor of American Custom Golf Cars, Inc., concluding that “Moke” is a generic term in this context and thus not eligible for trademark protection. This decision underscores the importance of maintaining the distinctiveness of a trademark to protect it from becoming generic.

What Happens if you Apply for a Generic Mark in the USPTO?

Generic words that are filed in the United States Patent and Trademark Office will be refused registration by the USPTO examining attorney.

15 U.S.C. §1052    (Extract)

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them . . . .

Matter that “merely describes” the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted in  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978) :

The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

The reason common words are not registered or protected as trademarks is to protect the public domain.  Common usage of a common term needs to be protected, as trademark law plucks these words out of the public domain to become a protected trademark.

While it is generic, the refusal will be because the mark is merely descriptive.  Merely descriptive trademarks cannot be registered on their own, as stated above.  Generic terms will not be allowed on the Supplemental Register.

With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness – or, on the other hand, descriptiveness – of a designation can be determined only by considering it in relation to the specific goods or services. Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1580, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e. , in connection with the goods).

At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., “[t]he name of a thing is in fact the ultimate in descriptiveness.” 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986) (quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961)).

Fanciful, arbitrary, and suggestive marks, often referred to as “inherently distinctive” marks, are registrable on the Principal Register without proof of acquired distinctiveness. See TMEP §1209.01(a).

Marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). See TMEP §1209.01(b) regarding merely descriptive marks and §§1212–1212.10 regarding acquired distinctiveness. Merely descriptive marks may be registrable on the Supplemental Register in applications under §1 or §44 of the Trademark Act. See 15 U.S.C.  §1091.

Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstances. See TMEP §§1209.01(c)–(c)(iii).

If you’re looking for an experienced trademark lawyer to help you with your trademark application, contact Verna Law, P.C. at anthony@vernalaw.com or 914-908-6757.