Reminder: Generic Terms Cannot Be Protected As Trademarks

February 8, 2013, 4:15 PM

A recent decision by the U.S. Eleventh Circuit Court of Appeals serves as a reminder that generic terms cannot be protected as trademarks or service marks for the products or services that are generally referred to by the terms in question. In its December 20, 2012 decision in the case of Millers Ale House, Inc. v. Boynton Carolina Ale House, LLC, the Court followed the ruling of an earlier Fourth Circuit Court of Appeals decision that, despite geographically broad and longstanding use of the term Ale House for its bar and restaurant establishments, Millers Ale House did not and could not have any trademark/service mark rights in this term because the words ale house are generic words for a facility that serves beer and ale with or without food.

In ruling that Millers competitor could continue to use the term Ale House in its name for food and drink establishments competing directly with those of Millers, the court gave short shrift to Millers contention that the passage of time (the Fourth Circuit ruling against Millers on the genericness issue was in 2000) had given rise to a change in public perception sufficient to allow the previously generic ale house term to be protected as a trademark. In doing so the Court noted that even very prominent use of a generic term by one competitor and obvious confusion of consumers by use of the same term by another are irrelevant if the term in question is not protectable as a trademark in the first instance, and that trademark law is not intended to prevent confusion between two similar, generic marks.

The reminder to be taken from this recent federal court decision is that when selecting a name or term to represent your business, products or services, you should pick one that is as distinctive as possible and, therefore, will serve to differentiate your brand best from those of your competitors. The hierarchy of legal strength of trademarks and service marks is that fanciful, arbitrary or suggestive marks are deemed to be inherently distinctive and make the strongest trademarks and service marks; marks that are descriptive of the goods or services they represent are not inherently distinctive and therefore make weaker trademarks and service marks, but a descriptive mark can acquire distinctiveness (also called secondary meaning) when the primary significance of the mark to the consuming public becomes not the product but the producer; and generic terms are in the public domain and therefore not protectable at all as trademarks or service marks.

Another lesson that can be taken from this case is that if a term is generic in the first place, it would take a truly drastic change in public usage or perception for it to morph into a protectable trademark. In fact, the Court noted an interesting bit of trademark trivia in its decision that in the entire history of U.S. trademark law there have only been two cases in which courts have held that a term previously ruled to be generic later became a protectable trademark through a change in public usage or perception. In both these cases the marks were not inherently generic terms, but instead terms (Singer and Goodyear) that had once been strong trademarks, but had proven so successful that they were held by the Supreme Court to have become unprotectable generic terms, before being resurrected as valid trademarks many years later. --Robert E. Smartschan