Intellectual Property Law

"Generic" May Not be the Best Trademark, But It's Not Generic at All

By Michael Atkins

When adopting a new trademark, owners usually run from generic terms. Since generic terms aren’t protectable, the owner of BOWL-brand bowling alleys, for example, won’t make much headway attempting to protect its “brand” against use by competing bowling alleys. The same reasoning compels the owners of truly famous brands to do what they can to prevent their marks from falling victim to “genericide” — the point when their proprietary marks become common words and open for all to use. The owners of XEROX, TIVO, and GOOGLE are fighting this fight; the owners of escalator, nylon, and yo-yo gave up the ghost years ago.

Given all this, I found it amusing to come across a new company called “Generic Medical Services.” I suppose if you’re a contrarian, you embrace what others avoid.

Interestingly, this company isn’t alone. A little looking revealed the “Generic Theatre Company” at George Washington University in Washington, D.C. (slogan: “We may be Generic, but we’re never bland!”); the Generic Theater in Norfolk, Virginia; the Generic Manufacturing Corp., and the Generic Carpet Warehouse to name a few.

The PTO found VERY GENERIC PRODUCTIONS as a whole to be inherently distinctive, though it found “PRODUCTIONS” to be descriptive and, therefore, required a disclaimer. In this context, “GENERIC” isn’t generic in the trademark sense at all; it’s probably suggestive or arbitrary. Presumably for the same reason, the PTO granted Bothell, Wash.-based Generic Software, Inc., federal registrations for GENERIC SOFTWARE and GENERIC SOFTWARE and Design, though the registrations were later cancelled — presumably because of abandonment.

Sort of strange that the functional equivalent of ACME or BRAND-X can be protectable as a brand. Though I’m not a branding expert, I’d still caution against being too cute in selecting a new trademark. The fanciful EXXON and arbitrary APPLE seem infinitely stronger than anti-trademark brands that proclaim NO BRAND or I DON’T COME FROM ANY PARTICULAR SOURCE.

Full post as published by Seattle Trademark Lawyer on April 07, 2009 (boomark / email).