A generic trademark is the name of a product/service/brand name which is the actual name for the product/service/brand name. Examples include: APPLE for apples, or LAW FIRM for a law firm. A generic term that could even obtain secondary meaning will not help that term become eligible for trademark protection. The rationale behind this prohibition is that to allow a single business, entrepreneur or inventor, the exclusive right to the generic term would give them a monopoly and an unfair competitive advantage over other businesses. Imagine the first person to register APPLE being able to prevent all other apple pickers or fruit stands from using the term APPLE to sell apples.

Registered trademarks can become generic. This is a process called trademark genericide. Genericide occurs when the meaning of a registered trademark becomes associated with the category, or “genus,” of the product. As a result, the trademark can no longer identify and distinguish the source of the product that bears the now generic term. Some examples of genericide include: THERMOS, ASPIRIN and VELCRO.

In September, out of the U.S. District Court of the Southern District of New York, a federal judge ruled on a lawsuit brought by Tiffany & Co. against Costco Wholesale Corporation. Costco was using the terms TIFFANY and TIFFANY SETTING, as a description when selling some of their engagement rings. Tiffany & Co. owns multiple trademark registrations for these terms and brought suit on the basis of trademark infringement, unfair competition, trademark dilution, among other multiple claims. Costco responded by filing a counterclaim, arguing that TIFFANY and TIFFANY SETTING has become generic for a ring setting with six prongs. Thus, the public now associates the term TIFFANY simply as a six pronged solitaire diamond ring, and not […]