Generic terms can never receive trademark protection. They are words or symbols that communicate what type of product or service is being offered. “Email” and “modem” are generic terms. Similarly, “cereal” is a grass, the edible part of which is used for a breakfast food. Many different manufacturers can manufacture “cereal,” and each of those manufacturers is entitled to use the generic term “cereal” to refer to its product. United States trademark law prevents trademark protection of generic terms because providing a generic term with trademark protection would be like granting a monopoly in the product.
How is a generic mark different from a descriptive mark? A descriptive mark can acquire a secondary meaning in the mind of consumers that can be proven. A generic mark cannot acquire a secondary meaning because it refers to the category of product or service. For example, “accounting firm” on its own cannot be registered as a service mark because it is a generic term for a type of service, and it cannot acquire a secondary meaning by association with only one accounting firm.
While a generic term cannot become a trademark, a trademark can become generic. Ironically, the more successful the trademark owner, the more likely it is that a trademark will become generic, causing the trademark owner to lose its exclusive right to use and protect the trademark. A trademark can become “genericized” if the mark becomes identified with a type of product or service in the public's mind, rather than a particular brand.
Aspirin, yo-yos, and cellophane became generic through consumer misuse of the trademarks to refer to these products. Their owners (respectively Bayer AG, Dupont Cellophane Co., and Duncan Toys Co.) lost their trademark rights in spite of their efforts to police the use of the marks.
Xerox is frequently used as an example of a trademark that was once threatened with becoming generic because of misuse. Xerox needed to advertise and encourage consumers to use “photocopying” rather than “Xeroxing” in order to stop misuse of its mark, and at least for now it remains a trademark.
Trademark owners should remember to enforce correct grammatical usage in their own marketing materials. For example, to avoid misuse, marketing materials should state “Make photocopies” rather than “Make Xeroxes,” or “Use Apple Computers” rather than “Use Apple.” The mark should be used as an adjective, and the generic name of the product is the noun in a sentence about the product.
Other ways to stop the genericity of a trademark are to use trademark notices and to make it visually easy for a consumer to distinguish between the trademark terms and generic product names in any documents associated with the product. A trademark owner should also avoid variations on a trademark such as through using apostrophes, abbreviations, or spelling changes, since the variations signal to the public that it is acceptable to misuse the mark.
In many cases, it is not possible to stop or “rescue” a mark from becoming generic. A trademark owner's efforts are not relevant to the question of whether a trademark has become generic. For example, the thermos company made significant efforts to stop the public from using “thermos” generically, but once the word “thermos” was appropriated by the public, the owner's efforts were not relevant to whether the term was generic. A marketing campaign or an effort to police the use of the mark can backfire, which makes it important to consult with experienced trademark lawyers.
If you are accused of infringing a trademark for a product whose name is ubiquitously used to refer to a type of product or service, rather than a particular competitor's product or service, you can defend against the lawsuit by arguing the mark has become generic. You can also affirmatively seek cancellation of a trademark by filing a suit in connection with a federally registered trademark you believe has become generic.
