As discussed in an earlier article, under the Spectrum of Distinctiveness, there are five distinct types of marks. The weakest type of mark is a generic mark. These are terms that the relevant purchasing public understands foremost as the common identification for goods or services. Under §§1,2 and §45 of the Lanham Act a generic term may never be registered on the Principal Register, nor may it be registered on the Supplemental Register under §§23(c) and 45. Generic words are incapable of functioning as source identifiers.  The purchasing public will never come to associate the generic term for just one source of goods or services.

A mark may be deemed as generic if its primary connotation to the relevant public is the class or category of goods or services on or in connection with which it is used. In determining genericness, the relevant public refers to the consuming public for the identified goods or services. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) sets forth a two-part inquiry to determine whether a mark is generic: (1) What is the genus of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? When looking at the second portion of the test, the inquiry is not asking whether or not the relevant public uses the term to refer to the genus, but whether or not the relevant public would understand the term to be generic.

In applying the two-part inquiry, the examining attorney bears the burden of proving that the term is generic. This evidence may be gathered from including dictionary definitions, research databases, newspapers and other publications. When determining whether or not a term is generic, it is not relevant that there may be more than one generic term for a particular category of goods or services. Any term that the relevant public understands to refer to the category is considered generic.

A generic mark is not limited to one-word designations, the two-part inquiry is the same for compound terms and phrases. If possible, the examining attorney should include evidence showing the use of the mark as a whole. Yet, if there is no evidence of third-party use of the exact compound term or phrase, that does not, alone, negate a finding of genericness for a particular mark.  An examining attorney may find that a mark comprised of a compound or shortened term is generic by showing evidence that each portion of the mark is generic and that when joined, each portion of the mark retains its generic meaning. In re WM. B. Coleman Co., Inc. 93 USPQ2d 2019 (TTAB 2010) the Trademark Trial and Appeal Board affirmed the finding that ELECTRIC CANDLE COMPANY was merely the combination of two generic terms put together to create a compound mark. As stated above, if both portions of the term retain their generic significance, then the mark may be deemed generic.

Aside from compound and telescoped words, mnemonic telephones numbers and Internet domain names are studied as well. In regard to mnemonic telephone numbers, an examining attorney must show that the relevant public would perceive the mark as a whole to have a generic significance. In reference to Internet domain names, an examining attorney must determine whether or not all parts of the name, including the Internet domain name, are generic, and if in sum, the mark itself is generic. In certain isolated instances, the addition of a top-level domain indicator (“TLD”) may make an otherwise generic mark, distinct. An example of this is In re Steelbuilding.com, 415 F .3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005). In this case, the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision that STEELBUILDING.COM was generic for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems.” In this rarified instance, the Court chastised the Board for looking at each piece of the mark individually, but not as a whole. When adding the “TLD” it expanded the meaning of the mark beyond that of just selling steel buildings. With the addition of the “TLD,” the mark took on the meaning of internet services as well, including beforehand modeling’s of the buildings and price calculations. This again reinforces the notion that the relevant public must take the entire mark to have generic significance, therefore an examining attorney must focus on the mark as a whole, rather than multiple generic components.

As stated by the Trademark Manual of Examining Procedure (TMEP), the expression “generic name for the goods or services,” is not contained to noun forms, but also captures “generic adjectives” as well; see Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013) which held FOOTLONG generic for sandwiches, excluding hotdogs. In a comparable manner, evidence that shows a singular form of a term to be generic can suffice to demonstrate that the plural is also generic.

In conclusion, generic marks are the weakest types of mark and may not be registered with the USPTO either on the Principal Register or the Supplemental Register. A mark may be deemed generic whether it is comprised of a phonetically spelled term, multiple generic terms, mnemonic telephone numbers, Internet domain names or generic adjectives. An examining attorney must use the two-part inquiry to determine whether a mark is generic, and the mark must be examined as a whole. If, as a whole, the mark retains its generic significance to the public, it may be considered generic, and therefore unregistrable on either the Principal Register under §§1,2 and §45 of the Lanham Act or the Supplemental Register under §§23(c) and 45 of the Lanham Act.

There are two separate and distinct federal trademark registers: the Principal Register and the Supplemental Register.

Fanciful, arbitrary, suggestive marks and marks that have become distinctive through exclusive and continuous use in commerce for more than five years are eligible for registration on the Principal Register.  Once a mark is on the Principal Register, it is afforded the full range of benefits and protections under the Lanham Act. A successfully registered mark is prima facie evidence of registrant’s ownership and exclusive nationwide right to use the registered mark in connection with the specified goods or services. 15 U.S.C. § 1057(b).  The registration provides constructive notice of a claim of ownership which means that an opposing litigant cannot raise a defense of good-faith adoption against a mark on the Principal Registration. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072.  Once a mark on the Principal Register has been in continuous use in commerce for five years, it may become incontestable and immune from certain attacks and defenses. 15 U.S.C. § 1065.  In a successful infringement action, the registrant may seek increased statutory damages.  15 U.S.C. § 1117 and 18 U.S.C. § 2320.  Finally, marks registered on the Principal Register can be used to stop the importation of infringing goods or services into the United States. 15 U.S.C. § 1124. There are additional benefits to registration on the Principal Register which are held in common with marks on the Supplemental Register.

The Supplemental Register is often an option for weak marks that can potentially identify goods or services from a particular source. These are the marks that are already in use in commerce and have been refused registration on the Principal Register because they are merely descriptive, deceptively misdescriptive, primarily geographically descriptive or primarily merely a surname. The Supplemental Register is preferential to merely continued common law use because it affords certain protections.  Marks on either the Principal Register or on the Supplemental Register may give notice of federal registration by using the encircled “R;” the registrants have the right to assert claims of infringement of a registered mark in federal court; the registration provides notice to those conducting clearance searches; the registration bars registration of subsequently filed confusingly similar marks and the registration may serve as the basis for foreign filing.

However, marks on the Supplemental Register do not enjoy a presumption of validity, ownership and exclusive right to use the mark, they may not be recorded with Customs to prevent importation of counterfeits and they may not become incontestable after five years of exclusive and continuous use.  After five years of exclusive and continuous use in commerce, a Supplemental Register registrant is eligible to file for registration of his/her mark on the Principal Register, only if the mark has acquired a secondary meaning. Only if the mark has become distinctive in connection with the goods or services will registration on the Principal Register be allowed.

When registration is not available on the Principal Register, trademark owners should explore the option of Supplemental Registration because it affords many advantages over common law use.