When filing for a trademark with the USPTO, it’s important to understand the different types of refusals you may encounter, including generic and merely descriptive refusals. While a merely descriptive refusal occurs when a proposed trademark is too descriptive of the goods or services it represents, a generic refusal occurs when the trademark is so common that it has become the common name for the goods or services themselves. Here’s what you need to know about generic trademarks and how they differ from descriptive trademarks:
What is a generic trademark?
A generic trademark is a term that has become the common or generic name for a type of product or service. For example, “aspirin” was once a registered trademark, but it has become so commonly used as a term for the pain reliever that it is no longer protectable as a trademark.
How does a generic trademark differ from a descriptive trademark?
A descriptive trademark is a term that describes the goods or services it represents, but still has some level of distinctiveness that sets it apart from other similar terms. For example, “Vision Center” may be considered descriptive for an optical store, but it still has some distinctiveness because it is not the most common or generic term for that type of store. In contrast, a generic trademark has no distinctiveness and is simply the common name for the product or service.
Why can’t generic trademarks be protected?
Generic trademarks cannot be protected because they do not serve to identify the source of the goods or services, which is the primary function of a trademark. If a term is so common that it is used by everyone to refer to a certain product or service, then it cannot be exclusively owned by any one person or company.
How can you avoid a generic refusal?
To avoid a generic refusal, it’s important to choose a trademark that is distinctive and not commonly used as the name for the goods or services it represents. This can include using made-up words, combining words in a unique way, or using a term that is not commonly associated with the goods or services.
What are some examples of generic trademarks?
Some examples of former trademarks that have become generic terms include “escalator” for moving staircases, “thermos” for insulated containers, and “yo-yo” for a spinning toy. In each of these cases, the trademark was so widely used that it became the common name for the product, and the original trademark owner lost their exclusive rights to it.
In summary, a generic trademark is a term that has become the common or generic name for a type of product or service, and therefore cannot be protected as a trademark. This is different from a descriptive trademark, which describes the goods or services but still has some level of distinctiveness. To avoid a generic refusal, it’s important to choose a trademark that is distinctive and not commonly used as the name for the goods or services.
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