2022 Marcom Trends - Magazine - Page 25
Spinning Out of Trademark Protection:
Highly Distinctive Marks Versus Generic Terms
Notably, if properly used and maintained, and in direct statutory
contrast to protection for patents and copyrights, trademark
protection does not have a time limit.
What do the words “aspirin,” “escalator,” “cellophane” and “thermos” have in common?
Each used to be a distinctive trademark but, over time, became a generic term that lost
Trademark Protection for Fitness Terms
The most recent example regarding this issue involves the terms
“Spin,” “Spinning,” “Spin Pilates” and “Spin Fitness,” all of which are
registered trademarks with the U.S. Patent and Trademark Office
(USPTO) and owned by Mad Dogg Athletics, Inc.
Peloton Interactive, Inc. petitioned the Trademark Trial and Appeal
Board of the USPTO (TTAB) to cancel all of these registrations on
the grounds that the marks have become generic terms for a type
of exercise bike and associated in-studio classes and thus are no
longer entitled to protection.
A trademark’s protectability hinges on its distinctiveness (i.e., its
ability to function as a source identifier for an entity), which falls on
a spectrum. At the strongest end of the spectrum are fanciful and
arbitrary marks, which are highly distinctive and entitled to robust
protection. Fanciful marks are made-up words created to function
as trademarks, such as “Clorox” for cleaning and disinfectant
products. Arbitrary marks are real words used in connection with
unrelated products or services, such as “Apple” for electronics.
In the middle of the spectrum are suggestive marks, which
conjure up or hint at qualities of a product or service without
actually describing them, such as “Netflix” for streaming movie and
On the weakest end of the spectrum are descriptive marks and
generic terms. A descriptive mark describes the characteristics of
the product or service and can only become protectable if it acquires
secondary meaning through extensive advertising, high profile usage
and/or consistent use over time, such that consumers come to
associate the descriptive mark with the brand. One such example is
“U.S. Postal Service” for mail delivery services in the United States.
In contrast, a generic term identifies the class of which the
offered product or service is a member, such as “Smartphone” for a
mobile phone with computer functions. A generic name is not, and
can never become, protectable, otherwise competitors would be
precluded from referring to their own products or services by their
commonly known names or terms.
There is tension between a well-known word being a highly
distinctive, protectable trademark and becoming generic and
thus incapable of protection. Specifically, a trademark can be
so ubiquitous and successful that consumers identify it as the
commonly known name or term for a product or service, rather than
as a particular brand. When that happens, the trademark can be the
victim of “genericide” and lose its legal protection, which is what
happened to “aspirin” for a pain reliever, “escalator” for a moving
staircase, “cellophane” for a thin transparent wrapping material, and
“thermos” for an insulated bottle.
In fact, there are multiple steps that can be taken to help protect a
distinctive trademark indefinitely, such as:
• Always using a trademark as an adjective that is followed
by a generic term or noun, and never pluralizing a
trademark or using it as a verb.
• Never altering or abbreviating a trademark and always
setting it apart from other words, such as by capitalizing
it, using a different typography or color, or enclosing it in
• Using proper trademark notice, such that the symbol ®
should be used after a federally registered trademark and
the symbol TM should be used after an unregistered mark.
• Policing and enforcing against infringements of a
• Marketing campaigns to educate the public about proper
trademark use, such as when Kimberly-Clark Worldwide
Inc. took out a newspaper advertisement explaining that
KLEENEX is a registered trademark that should always be
followed by the ® symbol and the term “Brand Tissue.”
What Businesses Should Know
• Generic terms can never be protectable trademarks.
Highly distinctive marks can become generic terms that
lose their protection if they become synonymous with the
common name or term for a product or service rather than
associated with a brand. However, there are steps that
can be taken to help maintain trademark protection, even
• While highly distinctive marks may not immediately
communicate to consumers the specific products or
services being offered, they are afforded the broadest
scope of protection.
24 DAVIS+GILBERT LLP
Specifically, a trademark can be
so ubiquitous and successful
that consumers identify it as the
commonly known name or term
for a product or service, rather
than as a particular brand.
Brooke Erdos Singer
Brooke helps clients achieve brand
success, coordinating the myriad of
trademark, contract . . . more
Joy J. Wildes
Joy plays a key role in the creative
branding process with strategic
trademark, advertising . . . more
Claudia G. Cohen
Claudia’s practice spans all aspects of
domestic and international trademark law.
She advises brands . . . more
• Advertisers and their agencies can seek to mitigate risk by
carefully selecting a mark and consulting with counsel to
evaluate its strength and protectability, as well as how to
help maintain its protection.
TRENDS IN MARKETING COMMUNICATIONS LAW 25