What are "generic" and "merely descriptive" trademarks?

A generic mark is one that is synonymous with the common term for that which you are selling. So, “chair” would be generic for “chairs.” That’s easy enough, but sometimes a company’s success can be its trademark downfall. For example, “Xerox” became so synonymous with “photocopy machine” or “the act of photocopying” that they nearly lost their mark. They have fought hard to keep it, including taking out ads that instruct people on how to use their trademark. If you create something new and innovative, you have to be all the more careful not to allow your trademark to become generic for your products. One could imagine a couple decades ago, someone getting the trademark for “smartphone” because there was no class of goods known as “smartphones” at the time. But by now, that term would be generic for a class of goods made by many different brands.

A merely descriptive mark is similar. That is a name that just describes its product. International Business Machines is an example of a merely descriptive mark. However, IBM owns the trademark today because it has “secondary meaning.” That basically means you’re so famous that even though your name is merely descriptive, everyone still knows who you are. Kind of like Beyonce, no one ever asks “Beyonce who?”

If the term describes only one significant function, attribute or property of the good or service, your mark may be rejected by the Trademark office for being “merely descriptive.” You don’t have to be able to guess the product based on the trademark. Here are some examples of “merely descriptive” marks that were rejected by the USPTO:

CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system.

AUTHENTIC SKIN REMEDIES merely descriptive of natural, toxin free beauty products.

E-AUTODIAGNOSTICS merely descriptive of an electronic engine analysis system comprised of a hand-held computer and related computer software

ASPIRINA is sufficiently similar to generic term "aspirin" in appearance and meaning to be merely descriptive of analgesic products

BATTLECAM mark is merely descriptive of computer game software

As you can see, what qualifies as “merely descriptive” can be tricky. Get the help of a trademark attorney today!

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