If you’ve been hit with a TTAB opposition or cancellation proceeding, you don’t have to stay on the back foot. One of the cleanest ways to push back is a counterclaim arguing that your adversary is relying on a trademark registration for a mark that is actually generic. Simply put, if the other side’s mark is actually the common name of what they sell, then no one can own that mark.
What is “genericness,” and how does a mark get there?
Genericness hinges on perception. When is a so-called mark actually generic? If it is understood to name what is being sold. If the mark’s primary significance to the relevant public is the class or category of goods/services for which the mark is used, then it’s generic.
The law tends to be very fond of two- or three-part tests. So, yes, there’s a two-part test for genericness. First, the test asks: “What is the genus of goods/services at issue?” Second, the test asks: “Does the relevant public understand the mark primarily to refer to that genus of goods/services?” Failing the test means there is genericness. If the so-called mark is generic, it cannot be a mark. And it cannot be registered as a trademark. End of story.
Think of a generic term as something that tells you what you’re buying, instead of telling you who is offering it in the marketplace. For example, if you’re buying a car that seats four people, the term “SEDAN” cannot be a mark in connection with that product. The primary significance of that term to the relevant public is a class or category of automobiles. But the term “CAMRY” certainly can tell you who made that car, which is why CAMRY is a mark.
There are two ways a mark can be generic:
- Be generic from the start (a.k.a. “generic ab initio”). Some terms start their life as the class or category, and never function as a mark. Examples include HOTELS.COM (in connection with hotel booking/info), PRETZEL CRISPS (in connection with pretzel crackers), and E‑TICKET (in connection with computerized ticketing).
- Become generic over time (often called “genericide”). Through widespread usage in the marketplace, a mark can lose its source-identifying meaning and become the name of the category of goods/services. Under such circumstances, a trademark registration can become vulnerable to cancellation even if it’s been registered for a long time. What matters is how the mark is perceived now. If your adversary has failed to curb widespread third-party use of their mark (a.k.a. “failure to police”), that could lead the mark to suffer genericide. Some examples of marks that fell victim to genericide are ESCALATOR, CELLOPHANE, and ASPIRIN.
Why this counterclaim is a whopper
- If you’re successful with this counterclaim, it can be decisive of the case. A generic term is never registrable. Genericness spells death for your adversary’s mark.
- A genericness counterclaim can be brought even against registrations that have been around for five years or more.
- This counterclaim reshapes negotiations. By putting your adversary’s own asset on the chopping block, you invert the risk calculus.
How to show it’s generic
Bring evidence of what the relevant public primarily understands the substance of the mark to mean today. You can look in various sources for evidence, including dictionary definitions; industry and media usage; widespread competitor usage; consumer‑facing websites and domain names (especially for so-called “generic.com” terms); and certain types of consumer surveys. The touchstone is primary significance to consumers now.
How this counterclaim can flip leverage
Your adversary had hoped to kill your application or registration, but when you raise a genericness counterclaim, your adversary must now fend off an existential threat to its own registration. Faced with the threat of such a dramatic reversal, your adversary may become much more amenable to an amicable settlement.
Bottom line
If your adversary’s mark is what the market calls the product itself, a genericness counterclaim does more than defend—it transforms the entire case. Build a record centered on what consumers understand now, stack multiple evidence sources, and shift the spotlight over to the question of whether your adversary’s own registration is valid.