You Can’t Register Generic Terms as Trademarks So Stop Trying

Many of our customers come to us trying to register trademarks that are generic terms for some good or service. Often the feeling is that if they register the term they will then be able to force others to license back the rights to use their “trademark”.

But among other issues with this business model is the U.S. Patent and Trademark Office’s prohibition against the registration of generic terms. In short, the U.S. Patent and Trademark Office will not register a trademark that so describes the class of goods or services for which it is used as to be considered one in the same (e.g., SHOES for shoes, RESTAURANT for a restaurant).

This issue was recently brought to the forefront of the national media by Apple’s attempt to register APP STORE. Their competitor, and long-time rival Microsoft, effectively blocked the registration of the trademark by arguing that it was generic for online retail store services that sell mobile applications for hand-held devices. Had they been unsuccessful Apple may have been able to claim exclusive rights to the term APP STORE forcing others to license the rights to use the same and, even worse, precluding others from using the terms altogether.

What does this teach us? You can’t register generic trademarks.
If the “trademark” you are attempting to register is the commonly known name for the good or service than it is generic and cannot be registered with the U.S. Patent and Trademark Office.

You are better of selecting a mark that does not immediately convey the purpose, a characteristic, or something otherwise descriptive of your goods – in other words an inherently distinctive trademark – and then spend your efforts building your brand. You’ll be glad that you did.

The Trademark Company