While seeking to cancel a trademark registration on the grounds that is generic is often difficult to prove, it is not impossible. Therefore, it is always prudent to be familiar with applicable rules and case law.
A generic term is the common descriptive term of a class of goods or services. Generic terms can never function as a trademark since they are incapable of indicating a single source of the goods or services. Public policy also prohibits the registration of generic terms since no one party should be able to appropriate such a term to the exclusion of others. If a party claims that an existing registered trademark is generic, is can seek to cancel the trademark registration at any time. Trademarks that were not generic at the time of registration can also be cancelled if they have subsequently become generic. This is also known as genericide. Infamous examples of genericide include the previously registered trademarks CELLOPHANE and ESCALATOR.
Whether a term is generic involves a tw0-part analysis, known as the Marvin Ginn test: First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?
The first part of the Marvin Ginn test involves an examination of the identification of goods or services contained in the trademark registration. The second part of the test of what constitutes the relevant consuming public is made in the context of the goods or services and the type of consumers who would fall under typical users. Recent TTAB decisions have held that the absence of third-party evidence of use of the term is not by itself fatal to a finding of genericness. See In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1958 (TTAB 2018).
Tips for Cancellation. If you are considering petitioning to cancel a trademark registration on the grounds of genericness, it is important to consider the following:
- Identification of goods. If the identification of goods or services set forth in the registration are indicative of the genus of the goods, than a finding of genericness is more likely. A simple example of this is SOURDOUGH for “bread and rolls.” Conversely, a registered trademark of “SOURDOUGH” for laptop computers will never be found to be generic of computers, since the term “sourdough” is not the genus of computers.
- Internet use. Proof of how the term is used, including dictionary definitions and third-party use, is probative of whether it is generic of the specific goods and services set forth in the registration. A party seeking to cancel a registration should seek to gather and preserve this evidence prior to filing the petition for cancellation.
- Registrant’s use. If the registrant itself uses the mark in a generic manner to describe its goods or services offered under the term, than this is strong evidence that it is generic and should be cancelled. To avoid cancellation, it is advisable that registrants educate their marketing department, vendors, and members of the consuming public that the mark is a registered trademark. All marketing and advertising copy, including social media posts and campaigns, should be reviewed and monitored to ensure that brand guidelines are followed.
To discuss a trademark cancellation case on the grounds of the mark being generic, please contact the author.