Many entrepreneurs are surprised to learn you can protect a generic brand name through trademark registration. However, these situations are limited and generally require the help of a skilled trademark attorney to register the mark successfully. Nonetheless, if you operate a business—especially an internet-based company—with a generic brand name like Apples-and-bananas dot com, you may be able to obtain trademark registration protections for your brand.
As a general matter, generic terms cannot be registered as trademarks. This is because they describe the general nature of the goods or services and are typically not distinctive enough to function as a source identifier. In this blog post, the BrewerLong team will describe the circumstances where general terms may qualify for trademark protection. We will also explain more about the risks and rewards of protecting a generic brand name. Speak with a Florida trademark lawyer today!
Protecting a Trademark Through Registration
Trademarks are designed to protect distinctive marks that can distinguish the goods or services of one entity from those of others. Generic terms are considered the common or generic names for products or services and are available for use by anyone in the industry. For example, using the term “Banana” as a trademark would likely be considered generic. Under most circumstances, this could not be registered as a mark for your business.
However, as mentioned, in some circumstances, your company might have a generic term for a name, but a consumer could or would not mistake your company’s name for the item or industry it is a part of. For instance, if your company is Apples-and-bananas dot com, a consumer would be unlikely to assume that your firm controlled all apple and banana production or imports. Instead, you might be eligible to register your trademark. As a result, you could protect your niche business of selling apple and banana-themed merchandise.
Eligibility for Trademark Registration
To be eligible for trademark registration, a brand name should be distinctive and capable of identifying the source of the goods or services. There are four general categories of trademarks regarding distinctiveness:
- Generic – Common or generic names for goods or services that cannot function as trademarks. Under normal circumstances, generic marks are not eligible for registration.
- Descriptive – This category describes a characteristic, quality, function, or purpose of the goods or services. Descriptive marks are not inherently distinctive and require acquired distinctiveness—also known as a mark’s secondary meaning—through extensive use and consumer recognition to be eligible for registration.
- Suggestive – This class suggests a quality or characteristic of the goods or services requires imagination, thought, or perception to understand the connection. Suggestive marks are inherently distinctive and can be registered without showing acquired distinctiveness.
- Arbitrary or Fanciful – This type of trademark has no inherent connection to goods or services. They are considered inherently distinctive and can be registered without showing acquired distinctiveness.
When attempting to register a trademark, business owners must demonstrate that their marks fall into one of these categories for the mark to be eligible for registration. The BrewerLong team can help guide you through registering your mark.
Importance of Booking.Com Decision for Trademark Registration Protections for Generic Brand Names
A 2020 Supreme Court case highlighted how companies could obtain trademark registration protections for generic brand names. The U.S. Patent and Trademark Office (“USPTO”) rejected four trademark applications filed by the travel website Booking.com, contending that the word “booking” is generic since it is directly related to making travel reservations. It further stated that adding the term “dot com” to a generic term did not further specify a generic term since it did nothing in the USPTO’s view to distinguish Booking.com from its competitors.
In an 8-1 decision, the Supreme Court ruled that consumers are the arbiters of whether such trademarks are generic. Further, the Court held that adding a “dot com” identifier actually added specificity to a generic term.
Business owners will want to take note of this decision, especially online-first businesses that are distinguished by their “dot com” monikers or other internet domain extensions that form their names. The Booking.com decision may empower owners of these companies to more confidently apply for trademark registration and protection for their company’s name and intellectual property.
In a world where more and more businesses are opting for a website first and a brick-and-mortar presence—if at all—second, this Supreme Court decision should help companies feel that efforts to protect their marks is money well spent. A skilled intellectual property attorney can help you put together a compelling application to present to the USPTO to help protect your generic brand name in line with the protection provided by the recent Booking.com decision.
Speak with an Orlando Intellectual Property Lawyer Today
Registering and protecting your trademarks can be complicated, but we can help. The experienced intellectual property attorneys at BrewerLong have spent years helping Florida businesses protect their trademarks, as well as other forms of intellectual property. Contact us today for a consultation.
This blog post is provided on an “as is” and “as available” basis as of the date of publication. We disclaim any duty to update or correct any information contained in this blog post, including errors, even if we are notified about them. To the fullest extent permitted by law, we disclaim all representations or warranties of any kind, express or implied with respect to the information contained in this blog post, including, but not limited to, warranties of merchantability, fitness for a particular purpose, title, non-infringement, accuracy, completeness, and timeliness. We will not be liable for damages of any kind arising from or in connection with your use of or reliance on this blog post, including, but not limited to, direct, indirect, incidental, consequential, and punitive damages. You agree to use this blog post at your own risk. Regarding your particular circumstances, we recommend that you consult your own legal counsel–hopefully BrewerLong.
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