In order to initiate cancellation proceedings, a petitioner must show that it has standing. Essentially, that it will be damaged by the continued registration of the disputed mark. The petitioner must also show that grounds exist to cancel the disputed mark. While there are numerous grounds for cancellation, some of which apply only during specific timeframes, one ground is always available: genericness. If a petitioner can show that a mark has become generic, its trademark registration will be canceled by the TTAB.

What is a generic trademark?

Generic trademarks are marks that the relevant purchasing public understands primarily as the common name for the goods or services the mark represents. Genericness therefore is a subset of “descriptiveness.” In fact, it’s the ultimate descriptiveness in that it perfectly and wholly identifies goods or services. Descriptive trademarks are generally not allowed registration on the Principal Federal Register, except in certain circumstances,. Because of this, a generic mark can be booted from the Register with a cancellation proceeding, and is not even allowed registration on the Supplemental Register.

What are some examples of generic trademarks?

There are a number of common terms that people use every day to describe a class of goods that were originally trademarks for a specific producer of those goods. Some of these include:

• Aspirin
• Cellophane
• Dry Ice
• Escalator
• Kerosene
• Thermos
• Dumpster
• Zipper
• Yo-yo

Is my trademark generic?

There is a two-part test to determine if a mark is generic. First, the “genus” of the goods or services identified by the mark must be determined. This is generally just the identified goods and services listed on the original trademark application. For example, what type of product or service the trademark identifies, like “legal services,” “timepieces,” or “furniture”. Second, it must be determined whether or not the relevant public understands the mark to identify that genus. According to the TTAB, the “relevant public” is simply “the purchasing or consuming public for the identified goods and/or services. And it is enough for the relevant public to understand the term is generic. It doesn’t matter whether or not the public actually uses the term. Further, there can be more than one generic term for a certain genus of goods or services.

When can a generic trademark be cancelled?

A generic mark can be cancelled whenever it “becomes the generic name for less than all of the goods or services for which it is registered”. 15 U.S.C. § 1064. An aggrieved party can bring a cancellation proceeding (is it can show it has standing) or an attorney at the USPTO can file a Petition to Cancel. The burden of proving the mark is generic is on the petitioner. The petitioner must have “clear evidence” that the disputed mark has become generic.

Conclusion

The two-part test to determine genericness is relatively clear, and the case law on the matter is voluminous. Similarly, the procedure for maintaining a cancellation proceeding with the TTAB is complex. If you need help identifying a generic trademark, or assistance in petitioning the TTAB to cancel a federally registered trademark, contact the trademark lawyers at Revision Legal using the form on this page or call at 855-473-8474.

Image Credit to Flickr user Susan Beach.

Editors note: this post was originally published in February, 2016. It has been updated for clarity and comprehensiveness.

The Genericide Test in Practice

Establishing that a mark has become generic requires more than demonstrating that consumers sometimes use the mark as a common noun. The Federal Circuit and the TTAB apply a two-part test: first, identify the genus of goods or services at issue; second, determine whether the relevant public primarily understands the disputed term to refer to that genus. Both steps involve evidentiary judgments that require meaningful factual development.

The genus is typically coextensive with the identification of goods or services on the registration. If the registration identifies “search engine services,” the genus is search engine services. If it identifies “adhesive bandages for medical use,” the genus is adhesive bandages. The genus framing matters because a term may be generic for one class of goods and still protectable for another. “Aspirin” became generic for analgesic preparations but would still function as a protectable mark for, say, a clothing brand — an absurd example, but illustrative of how genericide analysis is product-specific.

The primary significance inquiry then asks whether consumers perceive the term primarily as a brand identifier or as the common name for the product class. Courts and the TTAB accept a range of evidence on this question: dictionary definitions, media usage, how the term appears in competitors’ catalogs, the mark owner’s own use of the term, and consumer surveys. Of these, consumer surveys are the most reliable and often dispositive. The standard survey methodology — the Thermos-style survey asking consumers “What do you call this type of product?” — has been refined over decades of TTAB practice. A well-designed survey showing that a majority of relevant consumers use the mark as a generic term is typically sufficient to establish genericide.

High-Profile Genericide Battles

Several high-stakes genericide disputes have shaped the doctrine and provide practical guidance for trademark owners defending against cancellation on genericide grounds:

Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017), addressed whether “Google” had become generic for the act of conducting an internet search. The Ninth Circuit rejected the genericide argument, holding that verb use of a trademark — “to google” something — does not establish genericide unless the primary significance of the term to consumers is to identify a category of service rather than a source. This case is important because it confirms that widespread colloquial use as a verb does not automatically destroy trademark rights; the analysis must focus on noun use in connection with the relevant class of goods or services.

In contrast, the Federal Circuit found in Berner International Corp. v. Mars Sales Co., 987 F.2d 975 (3d Cir. 1993), that “screened porch” room enclosures sold under a registered mark had become generic because the evidence showed the relevant trade overwhelmingly used the term as a product category descriptor. The court gave significant weight to how competitors, retailers, and industry publications used the term, finding that the mark owner’s policing efforts were insufficient to reverse the market’s understanding of the term as generic.

What Mark Owners Can Do to Prevent Genericide

Genericide is preventable with active trademark stewardship. The most effective practices include:

• Use the mark as an adjective, not a noun or verb. “Kleenex tissues” rather than “a Kleenex.” “Please photocopy this document” rather than “please xerox this.” This grammatical discipline signals to consumers that the mark identifies a source, not the product class.
• Use the ® or ™ symbol consistently. The registration symbol reinforces brand significance and creates a record of the owner’s intent to maintain trademark rights.
• Monitor and send correction letters. When publishers, journalists, or competitors use the mark generically, the mark owner should send polite correction letters and document the monitoring effort. This establishes a paper trail of policing that can be used in later litigation to show the owner did not acquiesce in the generic use.
• Maintain a generic alternative. Creating and promoting an alternative generic term for the product category can redirect consumer and media usage away from the trademark. Xerox’s long-running “Don’t Say Xerox, Say Photocopy” campaign is the canonical example.

Cancellation Procedure at the TTAB

A petition for cancellation on genericness grounds is filed with the TTAB under 37 C.F.R. § 2.111. The petitioner must file a Petition to Cancel with the USPTO, serve the respondent, and the case then proceeds through the TTAB’s trial schedule: a discovery period, a testimony period, and briefing. Unlike district court litigation, TTAB proceedings are conducted primarily through documentary submissions and written discovery — depositions are permitted but not required. The losing party may appeal to the Federal Circuit or to a U.S. district court, where the standard of review differs: Federal Circuit appeals are on the record, while district court review allows for new evidence.

One important tactical consideration: a generic mark that has been canceled from the Principal Register is not automatically removed from all commerce. The registrant may retain residual common law rights in geographic areas of actual use, even after federal registration is lost. A successful cancellation proceeding eliminates the registrant’s federal registration benefits — nationwide constructive notice, presumption of validity, incontestability — but does not necessarily eliminate all rights in the mark. Petitioners who need the registrant to stop using the term entirely may need to pursue district court litigation for cancellation plus injunctive relief.

If you are facing a generic trademark cancellation proceeding, believe a competitor’s registered mark has become generic, or need to build a trademark stewardship program to protect your own marks from genericide, Revision Legal’s trademark attorneys can help. Contact us through the form on this page or call 855-473-8474.