Trademarks are valuable pieces of intellectual property that help customers associate a business to its goods or services. This association further distinguishes a business from its competitors and cements its place within a market. Registering a trademark with the United States Patent and Trademark Office (USPTO) is an important process for protecting their value but a common issue for prospective applicants is that their trademark is too generic. This blog explains what a generic trademark is, its impact on registration, and other consequences from using one in your business.
Trademarks can include words, symbols, and other designs as well as any combination of these elements. The strength of a trademark can also vary based on its distinctiveness and uniqueness. The strongest trademarks are typically fanciful or arbitrary terms that are either invented or used in a way that carries no prior association with your goods or services. Some examples of fanciful business names are Banana Republic or Shell because they do not have any connection to their respected industries.
In comparison, a generic trademark is one that already holds a strong connection to the goods or services a business sells and are often the common, ordinary terms for the product being sold. Trademarks that were once considered unique can become generic over time through popularized use and poor policing of infringement by the original owner. Aspirin, trampoline, flip phone, and videotape are some notable examples of trademarks that became generic over time.
The USPTO does not allow businesses to register trademarks it considers to be generic or merely descriptive. The USPTO prohibits registration of generic trademarks because of the unfair advantages it would create by limiting use of the word or term to a single owner. Additionally, the protection of a generic trademark through federal registration would be impractical because of its pre-existing widespread use.
Using a generic trademark to identify a business, or the goods and services it provides, can be problematic. First, the business may suffer from being unable to distinguish itself from competitors; which makes it difficult for consumers to understand the value of the product or service and seek it out over comparable items. Second, the business will likely be unable to assert any rights against other businesses that want to use the same trademark.
Federal registration of a strong trademark with the USPTO provides several benefits and protections to persons or businesses beyond rights available under state or common law. Registering a trademark with the USPTO makes it available for search in the USPTO’s database, which provides notice to other prospective users that the trademark is already in use and unavailable.
Having a federally registered trademark also creates a legal presumption that you are the owner with rights to use it throughout the United States and its territories. Owners of a trademark registered through the USPTO can also file a trademark infringement lawsuit in federal court to obtain remedies such as an injunction and financial compensation.
Understanding federal and state registration of trademarks is important for businesses concerned about protecting their brand and who want to fully enjoy the benefits of their intellectual property. Use of a generic trademark could limit the availability of a right to exclusivity and prevent your business from being able to register it with the USPTO.
An intellectual property attorney from Lomnitzer Law could identify potential issues with a proposed trademark registration, explore solutions to fix it, and submit the necessary registration application on your behalf. Contact us today for a consultation and to see how we can help protect your brand today.
