Trademark Strength · Minnesota

Generic Terms and Trademarks: What Can Never Be Protected, and How to Avoid Genericide

A generic term is the everyday name for a product, like "bicycle" or "hotdish," and the law never lets one business own it. A Minnesota trademark attorney at Twin Cities Trademarks helps you avoid building a brand on a generic word, protect a strong mark from becoming generic, and challenge a competitor who tries to claim a common term.

Flat, published fees · Offices in St. Paul & Coon Rapids · 100% recommend on Facebook (100+ reviews)

Short answer: A generic term is the common name for a type of product or service, and it can never be a trademark. The USPTO will refuse it on both the Principal and Supplemental Registers, and no amount of use or advertising cures it. Even famous brands can lose rights through genericide when the public starts using the mark as the product's name, as happened with aspirin, thermos and escalator. A Minnesota trademark lawyer can tell you whether your name is at risk and how to prevent it.

Flat-fee pricing at a glance

ServiceWhat's includedFee
Federal trademark application (one class)$700 legal fee + $350 USPTO filing fee$1,050
Each additional class$150 legal fee + $350 USPTO filing fee$500
Office action responseQuoted before work beginsTypically $350–$900
Statement of use (intent-to-use)Per class, government fee included$550 per class
Six-month extension of time to show usePer class, government fee included$550 per class
Formal screening searchPreliminary screening of your proposed mark$600
Comprehensive searchUSPTO records plus state trademark registries$1,600

Flat fees as published on our fee schedule. USPTO fees are set by the government and can change. Paying a filing fee does not guarantee registration.

What is a generic term in trademark law?

A term is generic when the relevant public understands it primarily as the name of a category of goods or services, rather than as a brand. Courts and the USPTO ask two questions, drawn from the Federal Circuit's decision in H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs (1986): What is the genus of goods or services at issue? And does the relevant public understand the term primarily to refer to that genus?

Examples are easy to spot once you look: Bicycle for bicycles, Pizza for a pizzeria, Hotdish for frozen casseroles, Ice House for ice-fishing shelters, Pontoon for pontoon boats. Everyone in the market needs these words, so the law keeps them free for all.

Where generic terms sit on the trademark strength spectrum

Generic terms sit at the bottom of the spectrum and receive no trademark protection at all.

CategoryWhat it isUSPTO treatmentScope of protection
FancifulInvented word with no prior meaningRegisters if no conflict; no distinctiveness proof neededBroadest
ArbitraryReal word unrelated to the goods or servicesRegisters if no conflict; no distinctiveness proof neededBroad
SuggestiveHints at a quality; takes imagination to connectRegisters on the Principal Register without proofModerate to strong
DescriptiveDirectly describes a feature, quality, purpose or placeRefused under §2(e)(1) unless acquired distinctiveness is shown; Supplemental Register is an optionNarrow until secondary meaning is proven
GenericThe common name for the product or serviceAlways refused; no amount of use cures itNone

Generic vs. descriptive: why the difference matters

Descriptive terms describe a feature of the product and can become protectable once they acquire distinctiveness. Generic terms name the product and never can. A claim of acquired distinctiveness under Section 2(f) does not overcome a genericness refusal, and generic terms are not eligible for the Supplemental Register.

The U.S. Supreme Court added an important wrinkle in USPTO v. Booking.com (2020): combining a generic word with ".com" is not automatically generic. The question is always how consumers actually perceive the term. Evidence like consumer surveys can make the difference, which is why a Minnesota trademark attorney should evaluate any mark built around a common word.

Genericide: how strong brands become generic

Even a fanciful or arbitrary mark can lose protection if the public starts using it as the name of the product. Aspirin, thermos, escalator and cellophane were all once brand names. A registration can be cancelled on genericness grounds at any time, even after it becomes incontestable.

Brands at highest risk are those that create a new product category. To protect yours, a Minnesota trademark lawyer will usually recommend these steps:

  • Always pair the mark with a generic noun: "Zevrik ice shelter," not "a Zevrik."
  • Do not use the mark as a verb, plural or possessive.
  • Give the product a separate generic name that customers can use instead.
  • Use ™ or ® and publish brand-use guidelines for retailers, distributors and licensees.
  • Correct misuse by the media, competitors and partners, and keep records of those efforts.

Courts look at how the public primarily understands a mark. In Elliott v. Google (9th Cir. 2017), the court held that using "google" as a verb did not, by itself, make the mark generic. Active policing still matters.

When a competitor claims a generic term

Sometimes the problem runs the other way: another business registers or asserts rights in a term your industry needs. If a competitor's application covers a generic term, you may be able to oppose it at the Trademark Trial and Appeal Board. If it is already registered, a petition to cancel on genericness grounds can be filed at any time. A MN trademark lawyer can also respond to a cease-and-desist letter that tries to stop you from using a common word. Learn more on our opposition and cancellation page.

Building a protectable name around a generic word

You can still use a generic word in your brand. You just cannot own that word alone. Combine it with a distinctive element, such as Frost Haven Ice Houses or Cardinal Pizza, and the USPTO will typically require a disclaimer of the generic part. Your protection then rests on the distinctive word. Your Minnesota trademark lawyer will help you decide which part of the name needs to carry the brand.

How we help with generic-term issues

AssessmentDetermine whether a term is generic, descriptive or distinctive.
Naming fixRecommend a distinctive element or a stronger name.
FileRegister the protectable part with the right disclaimers.
PoliceUsage guidelines and monitoring to prevent genericide.
ChallengeOppose or cancel competitors’ registrations of generic terms.

Generic-term issues for Minnesota and Twin Cities businesses

Minnesota businesses run into generic-term questions in predictable places: food and beverage brands built on regional dishes, outdoor and lake-life products, construction and home-service companies, and Twin Cities tech companies that create a new product category and risk their brand becoming the category name.

A Minnesota trademark lawyer at Twin Cities Trademarks advises businesses in Minneapolis, St. Paul, Coon Rapids, Blaine, Woodbury, Maple Grove, White Bear Lake, Rochester, Duluth and St. Cloud. A MN trademark lawyer from our firm can meet by phone, video or in person at our St. Paul or Coon Rapids offices.

Transparent, flat-fee pricing. Federal applications start at $700 plus the $350 USPTO fee per class. Your Twin Cities trademark lawyer quotes every other service up front, before work begins.

Why Minnesota businesses choose Twin Cities Trademarks

  • A licensed Minnesota trademark attorney reviews your name before you invest in it.
  • Flat, published fees with all other work quoted up front.
  • Brand-use guidelines that help prevent genericide.
  • A MN trademark lawyer who can oppose or cancel registrations of generic terms.
  • Offices in St. Paul and Coon Rapids with statewide remote service.

Generic trademark FAQ

What is a generic trademark?

Technically there is no such thing. A generic term is the common name for a product or service, such as bicycle for bicycles, and it cannot function as a trademark or be registered.

Can a generic term ever be registered?

No. Generic terms are refused on both the Principal and Supplemental Registers, and evidence of acquired distinctiveness does not overcome a genericness refusal.

What is the test for genericness?

The USPTO and courts identify the genus of goods or services, then ask whether the relevant public understands the term primarily to refer to that genus.

What is the difference between generic and descriptive?

A descriptive term describes a feature of the product and can become protectable with acquired distinctiveness. A generic term names the product itself and can never be protected.

What is genericide?

Genericide is the loss of trademark rights when the public comes to use a brand name as the common name for the product, as happened with aspirin, thermos and escalator.

What are examples of trademarks that became generic?

Aspirin, thermos, escalator and cellophane are classic examples of former trademarks that became generic terms in the United States.

How can I prevent my trademark from becoming generic?

Use the mark as an adjective with a generic noun, avoid using it as a verb or plural, give the product a separate generic name, publish usage guidelines and correct misuse.

Can an incontestable trademark be cancelled as generic?

Yes. A registration can be cancelled at any time if the mark becomes generic, even after it has become incontestable.

Is a generic word plus .com registrable?

Not automatically refused. In USPTO v. Booking.com (2020), the Supreme Court held that a generic.com term is generic only if consumers perceive it that way.

Can I use a generic word in my brand name?

Yes, combined with a distinctive element. The USPTO will typically require a disclaimer of the generic word, and your rights will rest on the distinctive part.

What is a disclaimer of a generic term?

A disclaimer states that you claim no exclusive rights in the generic word apart from the mark as a whole. It is common in composite marks.

Can a competitor stop me from using a generic word?

Not legitimately. If a competitor asserts rights in a generic term, a Minnesota trademark attorney can respond and, if needed, petition to cancel their registration.

How do I challenge a registration of a generic term?

You can file an opposition at the Trademark Trial and Appeal Board while the application is published, or a petition to cancel on genericness grounds after registration.

Does using my brand as a verb make it generic?

Not by itself. Courts look at how the public primarily understands the mark. Still, verb use is a warning sign that you should actively police.

Can a Minnesota regional term be generic?

Yes. Terms like hotdish or ice house that Minnesotans use to name a product are likely generic for those goods, even if they are less familiar elsewhere.

What evidence shows a term is generic?

Dictionary definitions, media usage, competitor usage, the applicant’s own generic use and consumer surveys are common evidence.

Is a Minnesota state registration of a generic term valid?

No. Generic terms are not protectable as trademarks under state or federal law.

How much does a genericness analysis cost?

Twin Cities Trademarks quotes clearance, opposition and cancellation work up front. Federal applications start at a $700 flat fee plus the $350 USPTO fee per class.

Do I need a MN trademark lawyer for a genericness issue?

Genericness questions turn on evidence and consumer perception, so a MN trademark lawyer can save you from investing in an unprotectable name or help you fight a competitor’s claim.

How can Twin Cities Trademarks help with generic-term issues?

We evaluate names, recommend distinctive alternatives, register the protectable part, draft brand-use guidelines and handle oppositions and cancellations. Call (651) 222-3776 for a free consultation.

Talk to a Minnesota trademark attorney about your brand name

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Twin Cities Trademarks PLLC · St. Paul & Coon Rapids, MN. This page provides general information, not legal advice for your situation. Contacting us does not create an attorney-client relationship. Fees listed exclude USPTO government fees unless stated and may change; see our pricing page for current figures.