Generic Trademarks: Judicial Perspective

Generic trademarks refer to terms that describe the basic nature or category of a product or service, rather than functioning as a source identifier. These terms are inherently ineligible for trademark protection because they are considered too common or generic to distinguish one source from another. The role of the courts in determining whether a trademark is generic is central to maintaining fairness in the marketplace and preventing monopolization of common language.

Legal Framework for Generic Trademarks

Under the Lanham Act (U.S. Trademark Act), generic marks are considered unregistrable. Section 2 of the Lanham Act explicitly excludes generic marks from the Principal Register, meaning that the U.S. Patent and Trademark Office (USPTO) will not grant federal trademark protection to a mark that is generic.

For a mark to be generic, it must:

• Identify the general category or type of goods or services rather than indicating a specific source.
• Be the term most commonly used by the relevant public to refer to that category, making it impossible for the term to serve as an identifier of source.

The key question courts ask when deciding whether a mark is generic is: "Does the mark merely name the product or service, or does it distinguish the source of the product or service?"

Courts' Role in Determining Generic Marks

Courts generally apply the "genericness" test to determine whether a mark is generic. The judiciary looks at several key factors:

1. Primary Significance Test:
   • The most widely used test to determine if a mark is generic is the primary significance test, which asks what the relevant purchasing public understands the term to mean.
   • If the public perceives the term as referring to the general class of products (and not the source), the term is deemed generic.
2. Evidence of Genericness:
   • Consumer Surveys: Courts often rely on consumer surveys to determine how the public understands the mark. If surveys show that a large majority of consumers believe the mark refers to the general product category, the mark is likely generic.
   • Use of the Term in the Marketplace: Courts will also look at how the term is used in the industry. If other companies are using the same term to describe similar products, it strengthens the argument that the term is generic.
   • Dictionary Definitions: Courts may reference dictionary definitions or other authoritative sources to check if the term is widely recognized as a generic term.
3. Competitor Use:
   • If competitors in the same industry are using the term to describe their goods or services, this indicates that the term is generic.
   • Generic terms often cannot be exclusively owned by a single entity because doing so would prevent others from accurately describing their products.

Case Law Examples

Several landmark cases have shaped the judicial treatment of generic trademarks, particularly in the U.S. Here's a look at some influential decisions:

1. Abercrombie & Fitch Co. v. Hunting World, Inc. (1982):
   • While primarily known for establishing the Abercrombie Spectrum to classify the distinctiveness of marks, this case also touched on the issue of generic marks. The court noted that a generic term is one that "refers to the genus of which the particular product is a species."
   • The decision solidified that generic marks, such as terms describing the type of product, cannot be trademarked.
2. Kellogg Co. v. National Biscuit Co. (1938):
   • This case involved the term "Shredded Wheat." The court found that "Shredded Wheat" was generic because it referred to the type of product rather than the source. Kellogg, therefore, could not prevent other companies from using the term to describe similar products.
3. Microsoft Corp. v. Lindows, Inc. (2004):
   • The Lindows case involved the use of the term "Windows" by Microsoft. While this case primarily focused on a trademark dispute regarding whether the mark "Windows" had been infringed, the broader legal principles outlined have been used in genericness cases. The court emphasized that if a mark becomes too generic or widely used in common parlance, it risks losing its trademark protection.
4. In re Dial-A-Mattress Operating Corp. (2001):
   • In this case, the court ruled that "Dial-A-Mattress" was not a generic term because it had acquired secondary meaning over time. However, the court's reasoning made clear that terms like "mattress" could easily be seen as generic if they weren't used with sufficient distinctiveness to indicate a specific brand.
5. Tea Rose-Interior Designs, Inc. v. Equinox Group, Inc. (1999):
   • In this case, "Tea Rose" was found to be a generic term for a particular type of floral design and could not be trademarked by one company to the exclusion of others. The decision emphasized that marks that merely describe a product or service, without additional distinctiveness, are inherently generic.

Types of Generic Trademarks

Generic marks can fall into different categories based on how they are used. Common examples of generic terms include:

• Product or Service Names: Words that refer to the product or service itself (e.g., "computer", "bicycle").
• General Descriptions: Terms used to describe a product's attributes, like "supermarket", "shampoo", or "pencil".
• Commonly Used Terms: Some terms start out as trademarks but become so common in the marketplace that they lose their distinctiveness over time. For example, "Aspirin" was once a trademarked term but has become a generic term for any pain-relieving drug.

Judicial Considerations in the Determination Process

• Public Policy Considerations: Courts often emphasize that the primary goal of trademark law is to prevent confusion in the marketplace and ensure that consumers are not misled about the source of products. Allowing one entity to monopolize a generic term would undermine this goal.
• Free Competition: Generic terms cannot be trademarked because doing so would stifle competition. If a company could claim exclusive rights to a generic term, it could unfairly prevent competitors from accurately describing their own goods or services.

Genericism and the Doctrine of Genericide

One issue that often arises with generic marks is genericide, where a formerly distinctive trademark becomes generic due to widespread use. If a trademark becomes a generic term over time (e.g., "thermos", "escalator", or "zipper"), it loses its protection.

The judiciary actively monitors and addresses instances of genericide. For example:

• The "Aspirin" Case: In 1921, the American Chemical Society sought to trademark the word "Aspirin," but the U.S. Patent Office rejected the trademark because the term had become the generic name for the substance in the eyes of the public. This case set the stage for recognizing the potential for trademarks to lose their distinctiveness over time.
• The "Cellophane" Case: In U.S. v. Cellophane (1950), the court ruled that "cellophane" had become generic and lost its trademark status. This ruling highlighted the potential harm of allowing a brand name to become synonymous with the product it represents.

Conclusion

Courts take a rigorous approach in determining whether a trademark is generic because the goal is to balance the protection of legitimate trademarks with the public’s ability to use common language. Generic terms, by definition, cannot function as identifiers of source because they are widely used to describe the products or services they refer to. Consequently, generic marks are denied trademark protection to avoid the risk of monopolization and to preserve fair competition in the marketplace.

Through tests like the primary significance test, evidence of market use, and consideration of consumer perception, courts uphold the principle that generic marks cannot serve as exclusive identifiers of a particular source, helping to preserve the integrity and functionality of the trademark system.