Previously, I introduced the concept of the spectrum of distinctiveness, which is a simple sliding scale we use to determine the potential strength of a mark. In this post, I will discuss generic marks, which fall on the left side of the scale:
A generic mark is one that is a common name of the product or service, as understood by the purchasing public. A generic mark cannot receive protection as a trademark. For example, an apple seller cannot trademark the word “apple” to describe his fruit products–such use of “apple” would fall on the generic end of the spectrum.
Additional examples of marks that courts found to be generic include “Lawyers.com” for websites containing legal information and “Screenwipe” for wipes for cleaning computer and television screens.
The US Patent and Trademark Office conducts a two-part test to determine if a mark is generic:
- What is the category of goods/services represented by the mark?
- Does the relevant public understand that mark to primarily refer to that category?
If the answer to question 2 is “yes,” then the mark is generic.
It is possible that a mark that was once nongeneric may become generic because the public’s understanding of its meaning has shifted. Some classic examples of words that were protectable trademarks, but were found to be “genericized” (at least in the U.S.) are: aspirin, escalator, thermos, and cellophane.
In a future blog post, I will describe some precautions a trademark holder can take to prevent its marks from reaching generic status.