In the world of trademarks, not all marks are created equal. Some trademarks are granted broad protection, while others receive none at all. One category that falls into the latter group is generic trademarks. But why are generic trademarks not eligible for protection?

A generic trademark refers to the common name or description of a product or service. For instance, terms like "milk," "bread," or "computer" are considered generic when used in relation to those products. These terms are part of everyday language and are essential for competitors to describe their goods or services accurately. Allowing one company to monopolize a generic term would unfairly restrict others in the marketplace.

The determination of whether a term is generic involves a two-part test:

1. What is the genus of the goods or services at issue?

2. Is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?

For example, if a company wants to trademark the term "Computer Store" for a business selling computers, the genus would be computer retail services. The relevant public would understand "Computer Store" to refer primarily to this type of business, making the term generic and ineligible for trademark protection.

If the United States Patent and Trademark Office (USPTO) issues an Office Action refusing a trademark application on the grounds of genericness, there are strategies to overcome this finding. One effective approach is to argue that the relevant public does not immediately understand the term to be generic.

1. Challenge the Evidence:

The examining attorney must provide "clear evidence" that the term is generic. You can argue that the evidence presented does not meet this standard. For example, if the evidence includes only a few isolated uses of the term in a generic sense, you can argue that this does not reflect widespread understanding.

2. Composite Marks:

When dealing with composite marks (marks made up of multiple words), argue that the combined term creates a unique commercial impression. The examiner must show that each word in the composite retains its generic meaning when combined. If the combination results in a distinctive meaning, the mark may be eligible for protection.

3. Consumer Perception:

Present evidence showing that consumers recognize the term as a brand rather than a generic descriptor. This can include consumer surveys, declarations from industry professionals, or evidence of extensive use of the term in a trademark sense.

4. Secondary Meaning:

Demonstrate that the term has acquired distinctiveness through secondary meaning. This means that, despite being initially descriptive or generic, the term has become widely recognized as a source identifier for your goods or services. This typically involves showing extensive and exclusive use, significant advertising, and evidence of consumer recognition.

Let’s consider a hypothetical scenario. Suppose you have applied for the trademark "TechBooks" for a company that publishes books about technology. The USPTO issues an Office Action refusing registration, arguing that "TechBooks" is generic for books about technology.

To overcome this refusal, you could:

1. Dispute the Genus:

Argue that the genus of goods is not simply "books about technology" but a more specific category that "TechBooks" uniquely identifies.

2. Composite Argument:

Show that "TechBooks" as a whole creates a distinctive commercial impression and is not just the sum of its parts.

3. Consumer Perception Evidence:

Provide evidence such as consumer surveys demonstrating that the public perceives "TechBooks" as a brand name rather than a generic term.

4. Secondary Meaning:

Present evidence of extensive use, advertising, and recognition to establish that "TechBooks" has acquired distinctiveness in the market.

Navigating the complexities of trademark law can be challenging, especially when facing a genericness refusal. Understanding why generic trademarks are not eligible for protection and knowing how to effectively argue against such findings can make a significant difference in securing trademark rights. By focusing on consumer perception, challenging the evidence, and demonstrating secondary meaning, you can overcome the hurdles of a genericness refusal and successfully protect your brand.