A word or phrase that is deemed generic can never serve as a trademark. The function of a trademark is to identify and distinguish the goods or services of one seller from those sold by all others. A generic term is one that is used as the name of a kind of goods; therefore, it does not identify and distinguish the goods or services of one particular seller.
Generic terms are in the public domain and free for all the public to use. Registered trademarks can also become generic if the public uses the term as the generic name for a type of product. For example, ASPIRIN was once a trademark owned by Bayer Company until it entered the public domain and became the generic name for that type of good. In fact many famous trademarks such as KLEENEX® and XEROX® use corrective advertising to educate the public that not every tissue is a KLEENEX® brand tissue, not every copier is a XEROX® brand copier.
The best way to prevent your mark from becoming generic is to police your mark to keep it out of the public domain. It is also imperative that you provide the public with an alternative name for your particular product so that your trademark is not the only name available to reference your goods or services. If the Bayer Company in the above example had provided the public with another name to refer to their product other than ASPIRIN they probably would still own the ASPIRIN trademark.
IP IN THE NEWS:
Recently Supervalu Inc. and the National Grocers Association entered into a fight against Wal-mart Stores Inc. in an attempt to prevent them from registering EDLP as a trademark. EDLP is an acronym for Every Day Low Prices.
Supervalu argues that EDLP is a generic name that references a strategy of retail pricing in which prices are set low and kept low every day. Supervalu cited many trade-journal articles written on EDLP price strategies as proof of genericness.
The National Grocers Association argues that granting the trademark registration to Wal-mart Stores Inc. would unfairly restrict “everyone else’s ability to market and advertise their goods and services.”
Wal-mart Stores Inc. counters by claiming that the acronym is not commonly used by other companies and that it is possible for the consuming public to associate a particular term with a particular company.
Editor’s Note: If Supervalu Inc. and National Grocers Association can show through enough evidence that many grocers as well as the general public have adopted the phrase Every Day Low Prices as well as the acronym EDLP to go along with it to refer to retail pricing strategies, then Supervalu and NGA will probably prevail. However, they will have to put on some pretty strong evidence as proof.