Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Articles

Separating Descriptive Sheep From Generic Goats

May 1, 2013

Articles

Separating Descriptive Sheep From Generic Goats

May 1, 2013

Back to News Listing

Most trademark lawyers are aware that generic names are unavailable for trademark protection under any circumstances, while merely descriptive terms are available for trademark protection if, and only if, they have acquired secondary meaning in the marketplace. “Secondary meaning” arises from use of a descriptive, or otherwise unprotectable, word or phrase in such a way, for a sufficient duration, and with enough frequency, that it becomes uniquely associated with the user and/or the user’s product(s). It is “secondary” in that it refers to an acquired, rather than to an inherent, meaning.

Accordingly, it is critical to understand the “generic”– “descriptive” dichotomy for trademark management and planning purposes. Promoting a name that can never become a trademark as if that name were a trademark is an exercise in futility. While promoting a generic name as a trademark might result in a degree of trademark recognition by the public, when that begins to happen, competitors can step in and, with impunity, appropriate to themselves and/or their products whatever degree of de facto trademark meaning might have been created. Generic names can never become de jure—that is, legally protectable—trademarks for the goods or services for which they are the generic names. Thus, KNIFE cannot become a trademark for knives, although it could, conceivably, become a trademark for forks and spoons. SHARP, on the other hand, could theoretically become a trademark for knives, though it plainly is descriptive (or, in any particular case, possibly misdescriptive) of the knives. Because SHARP is descriptive (or, possibly, misdescriptive) of the knives, it can become a trademark, theoretically, if it is used exclusively, long enough, and extensively enough to acquire a secondary meaning among consumers for a and, even if it occurs, will take considerable time.

Unfortunately, the consensus of United States legal authority on what is generic rather than descriptive, and vice-versa, has become somewhat discordant. In the world of the Restatement, “[a] designation that is understood by prospective purchasers to denominate the general category, type, or class of goods, services, or business with which it is used is a generic designation.” Reversing the inverted form of the sentence (and editing lightly), “a generic name is one that prospective purchasers understand to denote the general category, type, or class of goods, services, or business for which it is used.” At least, that is the common law of “Restatementworld.” In practice, an object may fall within more than one “genus”: “canoes,” “kayaks,” and “ships” are all generic names that fall within the genera “boats, vessels, and watercraft.” There can be layers of genera in many fields, and any particular object may have more than one generic name (e.g., “car,: “automobile,” “motor vehicle”).

The U.S. Trademark (Lanham) Act does not explicitly state that generic names cannot be registered on the principal or supplemental registers, although it appears to be so; if they are registered, either by mistake or, in some rare cases, because they did not have generic meaning when first registered—language, after all, does evolve—the Act plainly states that those registrations: (i) are subject to cancellation; and (ii) cannot become incontestable.

For the full journal article, read, “Separating Descriptive Sheep From Generic Goats,” written by Anthony L. Fletcher and first published in The Trademark Reporter.

Copyright © 2013 the International Trademark Association. Reprinted with permission from The Trademark Reporter®, 103 TMR 487 (2013).

Stay current with Fish Sign up for our Newsletter