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Should Generic Words Remain Registered as Trademarks?

Put this post in the category of evidence of how the law does not match reality.

Some new expressions become so popular that they turn into nouns in common parlance. A few of this type of expression started life as a trademark and are still registered either at the state or federal level. One legal and moral question is whether certain federal trademark registrations should be perpetuated. To date, at least in the U.S., there is no internal (governmental), active review of the trademark registry to purge out registrations that are highly likely to be found generic and non-registrable as a matter of trademark law.

However, ordinary citizens and business owners — if inclined to do a public service — can challenge the enforcement of trademarks. The statute, at 35 U.S.C. § 1064, states:

“A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed [in federal district court] as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905.” (emphasis added)

This statute appears to allow any potential infringer to bring a lawsuit to cancel a trademark registration on the ground that the mark is generic. No actual infringement is necessary – just a belief that the plaintiff will be damaged. The plaintiff can allege that perpetuating the registration of the mark could damage his business or the business of others in a particular industry. Even though the right exists, it is highly unlikely that any ordinary citizen would bring a lawsuit to purge the federal register of a word or expression that has become generic. It would take a substantial commercial interest.

It has become prohibitively expensive to bring a lawsuit on purely moral grounds. It is expensive both financially and as a time commitment. So, if the U.S. Trademark Office is listening, please save us the trouble of bringing lawsuits against bogus registrations of generic words and expressions. Please invoke your authority to purge out useless, generic trademark registrations so that we, as citizens, are not threatened by generic words persisting on the federal register.