traverselegal - January 10, 2012 - Trademark Basics, Trademark Law
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Internet Lawyer Brian Hall with Traverse Legal, PLC, a law firm that represents trademark owners throughout the United States. Today, I will be answering the question: “What is a generic trademark?”
A generic trademark is one that really does not qualify for any sort of trademark protection. It is essentially a term that is commonly used as the name of the kinds of goods or services to which it is referring. Examples can include a brand of shoes that someone would try to call “shoes” or a haircutting establishment that would be called barber. Essentially, trademark law does not allow someone to have exclusive rights to use a term that would merely refer to what that good or service is.
There are good reasons for this. You wouldn’t want to be held liable for trademark infringement if you were selling chairs and the name of your establishment or your website or your brand was chairs. Trademark law encourages use in a fair way, also known as fair use or descriptive use, of generic marks consistent with that policy.
Therefore, it’s important to recognize that although it may be useful for you to name your company or your particular good or service something that is exactly the term used to name or describe that kind of good or service, it will not allow you to claim exclusive rights or entitle you to trademark rights for that particular term.
More often than not, companies that would like to convey more about what the actual good or service is will have a distinctive mark, but then, simply refer to the type of good or service by using a term that is, in fact, generic. It’s important to recognize that the United States Patent and Trademark Office (USPTO) will not allow any generic marks to be registered on either the principal register or even the supplemental register. The other thing to keep in mind when we’re talking about generic marks is what’s known as the Doctrine of Genericness or Genericized. And what that means is that even though a particular mark was created by a company, and did not describe in any way, shape or form or it was used as a common term in reference to the particular good or service, over time, so many people have used that term and the company did not adequately protect against these unauthorized uses so as to make the term become generic. Good examples of that are elevator, zipper and, arguably, even Q-Tip. So, when recognizing that although you do have trademark rights initially, you do have that continued responsibility to protect against unauthorized use of your marks so as to avoid genericized.
This has been Brian Hall, again, answering your question: “What is a generic trademark?”
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