What happens when a trademark becomes generic?

What happens when a trademark becomes generic?

A trademark is a word, phrase, symbol or design that identifies the source of the goods of one company from the goods of competitors.  Companies spend a significant amount of time, money and effort developing and cultivating trademarks.  Distinguishing a company’s products from competitors’ products is the purpose of a trademark, and marketing departments are  typically told to make sure whenever a customer asks for a product they use the company’s trademark.  However, there is a tipping point when consumers begin to associate the trademark with the product rather than a brand of the product.  When a trademark no longer holds a secondary meaning that indicates a source of goods, then the trademark is considered generic and the owner of the trademark looses the right to prevent others from using the trademark.

In the United States trademarks are divided into five categories

  • Fanciful marks – are made-up words that only mean something in relation to a particular product. This type of mark is the strongest because of its absolute distinctiveness.
  • Arbitrary marks – are real words with a meaning that’s usually connected with a different class of products. “Apple” is an arbitrary trademark, because it’s a real word but the brand relates to computers, not fruit.
  • Suggestive marks – require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.  An example is Microsoft, that sells software for computers.
  • Descriptive marks – are marks that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Descriptive marks cannot be registered as trademarks unless the it is proven the mark has a secondary meaning.
  • Generic marks – are the weakest type of marks, and cannot be registered as trademarks.

For a registered trademark to become generic, it must have started out as a mark in one of the first four categories.  It is not a requirement that a trademark be registered for the trademark owner to have rights to the trademark, but registration of the trademark with grant the trademark owner additional rights.  If a trademark is not registered and it is considered generic it cannot become  registered trademark.  If a registered trademark becomes generic then a competitor could petition the Trademark Trial and Appeal Board to have the trademark registration canceled.

  • There are several things a company can do to prevent its trademarks from becoming generic.
  • Establish guidelines for the use of your trademark – make sure employees and distributors know how to refer to the company’s products.
  • Add a descriptive product name after the trademark – when referring to the trademark make sure to name the product in the same sentence to note that the trademark indicates the source of the product.
  • Add the word “brand” after the trademark on the product packaging – make sure to separate the trademark from the product being sold.
  • Diligently police the use of the trademark – if a competitor starts using your trademark it must be addressed swiftly. Allowing competitors to use your trademark with no repercussions can quickly lead to the loss of the trademark.
  • Expand your business – applying your trademark to different products will held solidify a secondary meaning in the minds of consumers.
  • Educate consumers – advertisements that remind consumers that your trademark is not the product name, but an indication of superior quality can help reinforce a secondary meaning in the minds of consumers.

The competing interests of wanting consumers to think of only your trademark when they want a product, and the risk of the loss of that trademark, are difficult to balance.  Companies spend significant time money and effort promoting their trademarks and if they are not careful they can end up loosing the trademark.

When you develop a new trademark it is important to consult with an experienced trademark attorney to ensure your marketing efforts do not undermine the strength of your trademarks.