How to Cancel a Generic Trademark

To remove a trademark from the Federal Register, a petitioner can file what is known as a Petition to Cancel with the Trademark Trial and Appeal Board (TTAB). The TTAB is an adjudicatory body within the United States Patent and Trademark Office (USPTO). If a petitioner succeeds, the disputed mark will be removed from the Federal Register and lose the rights it was granted by registration. However, it’s important to remember that removing a mark from the Federal Register doesn’t eliminate any common law rights it has.

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.