Generic and Trademark Don’t Go Together.
Plan on a Strong Trademark instead.
Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status. The reason is plain: To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Evidence of competitors' use of a term as the name of their goods and services is persuasive evidence that the relevant consumers perceive the term as generic. Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999).
To create a mark that is protectable under U.S. Trademark Law, distinctiveness is essential (the opposite of genericism). What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01.
Distinctiveness and descriptiveness are opposites. The level of distinctiveness varies along a continuum from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks are registrable on the USPTO Principal Register and generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplement Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness (must be proven with evidence and at least 5 years of use). Note that no amount of acquired distinctiveness can turn a generic term into a registerable trademark.
Not Generic Domain Name
Being Not Generic is important to a domain name for potential USPTO trademark registration and Intellectual Property Rights (IPR) protection because marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks (TMEP 1215.05 Generic Refusals).
Being Not Generic is important for a domain name owner to deter cybersquatters because
only domain names that are inherently distinctive or have acquired distinctiveness
gain common law rights against cybersquatters. See WIPO Case No. D2007-
Cyberpiracy or Cybersquatting
In order to succeed in a claim against a potential cybersquatter, a complainant must demonstrate that the three elements from 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP) have been satisfied:
(See full pdf of Uniform Domain Name Dispute Resolution Policy (UDRP) as approved by ICANN on October 24, 1999.)
First Element: That the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
Second Element: That the respondent has no rights to or legitimate interests in respect of the domain name; and
Third Element: That the respondent has registered and is using the domain name in bad faith.
See Creation, Screening and Clearance for more details on Cyberpiracy Prevention and the Anticybersquatting Consumer Protection Act (ACPA).
Examples of legitimate interest in a domain name (Second Element) include using common words (generic words or dictionary words) and using advertising in direct association with those common words.
The registration of common words as domain names, and the posting of advertising
or hyperlinks relevant to that common word, can be a legitimate interest if the advertising
and links are clearly and directly related to the common word. Advanced Drivers Education
Products and Training, Inc. v. MDNH, Inc (Marchex), FA 567039 (Nat. Arb. Forum Nov.
10, 2005) (respondent had legitimate interest in <teensmart.com> domain name because
site contained paid links of a teen-
Note: A Domain Name owner has a presumptive legitimate interest in a name if they
register the name as a USPTO trademark. See EAuto, L.L.C. v. Triple S. Auto Parts
d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-
Generic is Good?
Domain names that are generic are good for the valuation of a domain name-
How generic is generic and how valuable? The name Vodka.com was reported to have sold for $3 million. On the other hand whereas Vodka.net is just a collection of links with no content. If the owners of the .net sites had bought the sites with the purpose to sell them to the .com sites, this could be found as bad faith.
Among the lists of circumstances that may be seen as bad faith:
(1) That the domain name has been registered or acquired by a respondent “primarily
for the purpose of selling, renting, or otherwise transferring the domain name registration
to the complainant who is the owner of the trademark or service mark or to a competitor
of that complainant, for valuable consideration in excess of [respondent’s] documented
out-
(2) that a respondent has registered the domain name “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct” ( UDRP4(b)(ii)), and [otherwise known as “Reverse Domain Name Hijacking”]
(3) that a respondent “by using the domain name, … [has] intentionally attempted
to attract, for commercial gain, Internet users to [its] web site or other on-
Source: Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-
Selling names that contain the trademarks of others with knowledge of the trademark
may be seen as bad faith under the UDRP, but otherwise parties have rights to sell
domain name registrations that have been legitimately registered without other indications
of bad faith. See Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-
Legal Definitions of Generic-
- “The determination of whether a mark is generic is made according to a two-
part inquiry: “First, what is the genus of the goods or services at issue? Second, is the term sought to be registered ... understood by the relevant purchasing public primarily to refer to that genus of goods or services?”” In re Dial-A- , 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001), quoting from H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-Mattress Operating Corp. 90, 228 USPQ 528, 530 (Fed. Cir. 1986). - “Generic terms are common names that the relevant purchasing public understands primarily
as describing the genus [category] of goods or services being sold. They are by definition
incapable of indicating a particular source of the goods or services.” In re Dial-
A- , 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001).Mattress Operating Corp. - “A term is generic, i.e., so descriptive that no amount of de facto significance as a source indicator can justify its registration on the [USPTO] Principal Register, if the relevant public understands the term primarily to refer to the class of goods or services with which it is used.” In re The American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
- “Generic terms describe a category of products, and therefore cannot signal any particular
source: "A [trade]mark answers the buyer's questions `Who are you? Where do you come
from? Who vouches for you?' [Otherwise known as the ‘who-
are- Official Airline Guides, 6 F.3d at 1391 (quoting 1 J. McCarthy, Trademarks and Unfair Competition § 12.01 (3d ed.1992)). “It would be improper to extend trademark protection to a product's generic name because "it would effectively `grant [the] owner of the mark a monopoly, since a competitor could not describe his goods as what they are.'" Filipino Yellow Pages, 198 F.3d at 1151 (quoting Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1017 (9th Cir.1979)). If, however, a generic term is combined with another word or words to form a distinctive term, the resulting compound can be trademarked. See Cal. Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir.1985) (holding that the validity of a composite term "is not judged by an examination of its parts"). Source: Nautilus Group v. Icon Health and Fitness, 372 F.3d 1330 (Fed. Cir., 2004).you’ part of the “who are you/what- are- you" test.] But the [generic] name of a product answers the question `What are you?'"”
Legal Rights of Generic Trademarks
- A generic trademark has little or no common law trademark rights because the law doesn’t give trademark owners or domain name owners the right to exclusively use words in common use (dictionary words).
- In considering common law rights, the court must consider “the degree of inherent or acquired distinctiveness.” By definition, generic terms have no distinctiveness so the only rights are rights acquired by use. An inherently distinctive registered or unregistered trademark has common law rights under U.S. Trademark Law because the general principles qualifying a mark for registration under §2 of the Lanham Act are mostly applicable in determining whether an unregistered mark is entitled to protection under the Federal Law of Unfair Competition (15 U.S.C. Sec. 1125(a) (Section 43(a) of the Lanham Act). A.J. Canfield Co., v. Honickman, 808 F.2d 291, 299 (1986) but a generic mark is the opposite of an inherently distinctive mark.
- A domain name owner can acquire rights, through use, in generic names but can only stop cybersquatters using the same or similar name if they have no legitimate interest or are otherwise using the name in bad faith.
- A generic trademark or generic domain name cannot receive USPTO Federal Registration under either the Principal Register or the Supplemental Register.
- A merely descriptive mark may achieve registration on the USPTO Supplemental Register. While a Supplemental Registration does not give the trademark owner any statutory exclusive rights to use the mark, there are some advantages in having a Supplemental Registration over having no registration. See Comparison of Principal Registration v. Supplemental Registration. A mark that has acquired distinctiveness that is merely descriptive has the potential of being registered on the Principal Register.
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