Trademarking is a good way to protect the distinguishable features of your business. However, there are some circumstances that can make it more difficult to register a trademark. If your business name contains a generic word, it can be particularly tricky to trademark it. In this article, we explain the ins and outs of generic trademarks and what you should consider before going ahead with a generic name.
What are generic trademarks?
A generic trademark is a generic, descriptive term used to name a product or service. For example, naming your t-shirt brand as “t-shirts”. However, using a common word does not necessarily mean that it is a generic trademark. For example, if you had named your cake products as “t-shirts”, it would be a different case from the previous scenario because it could still be distinguishable from other businesses of the same trade. Apple Inc. adopted this exact kind of branding – using the common term ‘apple’ for its tech products.
Can I register a generic trademark?
Trademark owners have exclusive rights to their trademark. The purpose of registering a trademark is to protect your brand by distinguishing your product or service from those belonging to your competitors. Therefore, it would be difficult to register a generic trademark. Since generic trademarks describe their business, an unfair monopoly is created by preventing others from using marks they would naturally wish to use in their industry. IP Australia is the Australian office responsible for determining whether a trademark is registrable. They assess the applicant’s mark against whether other traders in their natural course of business are likely to use the same mark for their own goods.
However, if you believe your trademark is distinctive enough and is not a purely descriptive name of your product or service, you may still apply to register the mark. If you are unsure of whether you should register your trademark, we recommend consulting with a trademark attorney.
Can I trademark my own name?
You certainly can trademark your own name. However, it could be challenging to trademark a more common name for a common good or service. The trademark examiner might find that other members of the industry with the same common name would likely need to use the name for their goods/services. Examiners will also consider whether the name you wish to trademark is the same as a famous personality. In that case, the mark will not be accepted for registration if they find that your trademark will mislead others into thinking your product/service is endorsed by the celebrity.
Genericised trademarks
Ironically, trademarks themselves can become generic words over time. This could be due to its popularity or significance in the market. The trademark, therefore, becomes synonymous with its product/service and is now a genericised trademark. Common examples include BandAid, Aspirin, and Zipper. In terms of marketing, this is definitely good for the popularity of the business. However, as the use of a product/service becomes more common, enforcing trademark protection will become increasingly difficult. The mark will eventually become less capable of distinguishing.
You can prevent genericide by:
- Ensuring your trademark is always used in conjunction with the ‘™’ or ‘R’ symbol.
- Avoiding the use of your trademark in the form of a noun on its own. For example, using the phrase “grab a Kleenex tissue” as opposed to “grab a Kleenex”.
- Enforcing your trademark early on if the situation arises.
Final thoughts
Trademarking can be the key to the successful branding of your products or services. However, there are certain requirements for a registrable trademark. Remember: trademarks are more likely to be registrable if your brand name is unique and distinguishable from others of the same trade. We recommend speaking to a trademark attorney to help you understand your options.
