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Generic Terms and the Public Domain: Why Some Federal Trademark Registrations Must Be Cancelled

A widely popular misconception about trademark law among consumers is that once a federal trademark registration is obtained, there is no way the trademark owner can lose their rights in the trademark. On the contrary, there are a number of different grounds an opposing party may assert to cancel a registered trademark though the available grounds vary depending on how long the trademark has actually been registered. Generally, cancellation of a trademark is accomplished by filing a petition to cancel the trademark with the Trademark Trial and Appeal Board, an arm of the United States Patent and Trademark Office (hereinafter, “USPTO”) that functions as an administrative board, i.e., the court, that presides over the cancellation proceeding. Simply put, it is the Trademark Trial and Appeal Board that makes the final ruling, after being presented with evidence and arguments from both the trademark owner and the opposing party, regarding whether the registered trademark should be cancelled.

                One cancellation ground that remains available no matter how long a trademark has been registered is genericism. A generic term is defined as a term that the relevant purchasing public understands primarily as the common or class name for the goods or services sold in connection with the term. See TMEP § 1209.01(c). In other words, if the trademark is the very name of the good or service sold under or in connection with the trademark, then the trademark is likely generic and not registrable. This is because the function of a trademark is to denote or indicate the unique source of a good, i.e., that the specific goods at issue originate from a single source—the trademark owner. If a mark is generic, however, it is the common name for the goods being sold and, therefore, multiple sources use the same term to identify the same goods. Where the trademark is distinctive rather than generic, use of the trademark by multiple sources generally supports a trademark infringement claim brought by the trademark owner. Where the mark is generic, however, the term(s) that comprise the mark are (or should properly be deemed) a part of the public domain whereby everyone becomes entitled to use the term(s) without fear of infringing upon another’s trademark rights.

                By way of example, Apple® is a live, federally registered trademark belonging to Apple Inc. that is used in connection with computers, computer software, computer peripherals, etc. Because the mark is used in connection with computers and computer software, the term “Apple” is not generic as “Apple” is not the common name used to identify computers. If Apple Inc. decides to sell green apples in connection with the Apple® mark, however, the mark would likely be deemed generic as to those specific goods because “Apple” is the class name or genus for green apples. Said differently, it is entirely possible for the same mark to be used in connection with a variety of goods and services and only be deemed generic in connection with some of those goods or services.

                If a mark is generic, though, then why would the USPTO allow it to proceed to registration in the first place? The answer is that a mark is usually never generic from its inception. Many marks that were originally distinctive and worthy of trademark protection when they were registered become generic over time as consumers begin to not only associate the mark with the goods and/or services sold thereunder (which is the very function of a trademark) but to refer to the goods or services by that trademark. Over the span of several years, a mark can progressively shift from the distinctive side of the continuum to the generic side thanks to consumer usage of the mark in such a way as to identify the goods sold under the mark, not the source of the goods, i.e., the trademark owner.

                Popular examples of live, federally registered trademarks which have likely become generic over the years, but which nevertheless remain federally registered, include the following:


U.S. Registration No.

Goods and Services



International Class 026: snap fasteners [ and grommets in the nature of eyelets ] for securing tarpaulins



 IC 028: toy figures



International Class 017: irregular solid masses of multicellular expanded synthetic resinous material [ and granular masses of the same material comminuted ]



International Class 016: writing instruments, namely pens and markers



International Class 025: Infant's and children's clothing, namely, infantwear, underwear, bodysuits, underclothes and undergarments



International Class 012: boats, namely recreational watercraft



International Class 011: electric cooking appliances-namely, casseroles



International Class 017: cellular cushioning packaging material which contains entrapped bubbles of air or other gases.


                In an effort to prevent their trademarks from slipping onto the generic side of the continuum, some trademark owners attempt to educate consumers about the consequences of widespread generic or descriptive usage of their trademarks by publishing creative content that encourages consumers to voluntarily discontinue such use. Others, however, adopt a more aggressive approach by vigorously policing unauthorized generic or descriptive uses of their trademarks such as, for example, by waging trademark infringement suits against unauthorized users or submitting intellectual property or trademark infringement complaints against the unauthorized users to third party platforms that feature or display the subject use. Though trademark owners are generally encouraged to enforce their legal rights against potential infringers, the merits of such enforcement actions are brought into question where the subject trademark has already become generic. In such cases, the recipient of the intellectual property or trademark infringement complaint likely has a meritorious defense to such claims of infringement that may include a viable legal basis for cancellation of the federally registered but generic trademark.

                Recipients of intellectual property complaints or trademark infringement reports on e-commerce platforms such as Amazon, Etsy, eBay, and the like are highly encouraged to consult with an experienced attorney to determine the viability of instituting a cancellation proceeding against the trademark registration forming the basis of the intellectual property or trademark infringement complaint, particularly where the registered trademark has become a generally known and oft used term referring to any one of the goods or services sold thereunder.

For more information on the above or to secure representation, feel free to contact Johnson | Dalal at (954) 507-4500 and ask to speak to one of our qualified attorneys at no charge.  We look forward to answering any questions you may have.

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