Under trademark law, words which describe an entire category of products or services cannot be protected because they are generic. A generic term cannot even acquire secondary meaning over a period of time or as the result of extensive advertising.
There are two types of generic names — those that are generic from their inception, and those that began as protected brand names but became generic.
In essence, the “from inception” generic names are not really brands at all. For example, in recent years HOTELS.COM was denied registration by the USPTO, and on appeal by the Court of Appeals for the Federal Circuit, never acquired any protection and thus is not really a trademark – the owner has no rights to tell anyone else to stop using HOTEL.COM or HOTELS.NET, names which are extremely similar.
Names that were once protected brands but “became generic” are similarly not entitled to any real trademark protection – even though at one time they were. Well known examples of such “became generic” words include “aspirin” and “escalator.” At one time they were registered and unique to one company’s products. But overtime they were used by everyone to describe a whole category or “genus” of products and the former brand names become unenforceable and un-registered with the USPTO.
But when was the last time a well known brand name became legally generic in the United States due to a loss of its rights? I could not think of any example from the past 20 years. And I have posed the question lately to several other trademark attorneys. None could provide an example. In one well known case, Intel attempted to claim rights to the numbers “386” but it was denied. But I don’t believe that at the time “386” was not a well known brand belonging solely to Intel up until that time. Thermos was declared a generic term for a vacum insulated container in 1963.
I don’t think we will see a well known brand become generic anytime soon. Branding advice has become much more sophisticated over the last few decades. The investments companies make in advertising, branding, trademark attorneys, and the like is much greater. Trademark attorneys and brand managers have learned from the errors made in the past. And the economics of one user challenging a huge company that has millions of dollars, or more, invested in a brand name, do not favor challenging the brand.
For example, boxes of Kleenex actually say “Kleenex brand tissues,” and many other brands also make sure to use the generic category term on their packaging to make it clear that their brand name is not the category name. Starbucks notes that a Frappuccino is actually a “Frappuccino blended beverage.” For more on this phenomenon, see my earlier post, Avoiding generic trademark use by using generic term after trademark.
For example, the following names are NOT generic yet – and are registered with the USPTO – and are unlikely to ever become legally generic even though the public mis-uses them all the time:
- Ping pong
- Hula hoop
- Wiffle bat
- Jet Ski®
For some ‘generic’ tools used by trademark lawyers, including links to the major USPTO and other searches, see the page I created called: