Words or symbols commonly used to describe an entire type of product or service rather than to distinguish one product or service from another are known as generic. Generic terms never receive protection because such terms cannot fulfill the function of a mark, which is to distinguish specific goods or services from competing ones. Therefore they belong in the public domain rather than to an exclusive owner.
EXAMPLE: “Raisin bran” is a generic phrase that describes a kind of cereal; it defines the product itself rather than its source. Several different cereal manufacturers produce raisin bran, each of which is identified by its own mark—for instance, Post Raisin Bran, Kellogg’s Raisin Bran, Skinner’s Raisin Bran. While each of these manufacturer’s marks is entitled to protection, the words “raisin bran” are not.
Combining a generic term with other terms may sometimes result in a protectable composite mark. However, often, the generic term must be disclaimed before the USPTO will grant trademark registration for the composite mark. Combining a generic term with a top level domain such as “.com” rarely results in a protectable composite mark. For example, the Ninth Circuit reversed a lower court ruling that the registered mark “Advertise.com” was not generic. The mark which had been registered by AOL was intended for “online or Internet advertising.” (Advertise.com v. AOL Advertising, Inc., 166 F.3d 974 (9th Cir. 2010)).
Some protectible marks may lose their protection by becoming generic. “Genericide” occurs when a mark is used widely and indiscriminately to refer to a type of product or service, rather than the service or product of one company. For example, “escalator” was originally a protected trademark used to designate the moving stairs manufactured by a specific company. Eventually, the word became synonymous with the very idea of moving stairs and thus lost its protection. Other examples of marks that have become generic are lite beer, soft soap, and cola.
How can a company keep a mark from becoming generic? To begin, most companies need not worry about this issue, since very few products or services are successful enough to produce a generic mark. But for those that are, the Xerox campaign is instructive. The “Xerox” mark was in danger of becoming generic because it was so commonly used to describe photocopiers, the process of photocopying, and the result. To counter this threatened genericide, the Xerox Corporation spent millions of advertising dollars advising the public that Xerox is in fact a registered mark, should only be used as a proper adjective in connection with a noun (for instance, Xerox brand photocopier), and should not be used as a verb (that is, to xerox something) or as a general noun indicating the result of the photocopying process (a xerox). Google, the Internet search engine company, has embarked on a similar crusade. For example, the company has sent letters to online dictionaries making it clear that the term “Google” refers to only one company’s services, not to all Internet searching. (Despite that fact, Google is commonly used as a verb as in, “I Googled that.”) If anyone challenges Xerox or Google on the grounds that their trademarks have become generic, these companies may prevail if they can show that they took steps to avoid genericide and that people continue to consider the trademarks as a brand, rather than generic, name.