Are Your Marks Protected from Genericide?

Federal trademark law allows a party with standing to cancel the registration of a mark deemed “generic.” Under the Lanham Act, the recognized test for generic marks is “the primary significance of the registered mark to the relevant public.” See 15 U.S.C. § 1064(3).

What does this mean? There are a couple of different surveys that help determine the primary significance of a mark to its relevant consumers, including TEFLON surveys and THERMOS surveys.

A TEFLON survey is where consumers are presented with a list of terms and asked to determine if those terms are brand names or product names. A THERMOS survey involves asking a consumer how they would ask for the product at issue in a store. For example, if you go into a store and ask for “aspirin”, you believe that “aspirin” is the product that you are requesting, not that “aspirin” is a brand name which indicates a single source of that product.

When the primary significance of a term is the product, not the source, that term is said to be generic. Genericized trademarks lose their protection because they have not been sufficiently maintained and guarded.

Some formerly federally registered marks that you may not have even thought of as trademarks have been held generic by courts and therefore have entered into the public domain. That list includes:

  • Aspirin
  • Dry ice
  • Heroin
  • Kerosene
  • Laundromat
  • Linoleum
  • Thermos

Then again, you may be aware of other terms that seem very commonly used to refer to a product but that still maintain their protected trademark status. That list includes:

  • Band-Aid ®
  • Bubble Wrap®
  • ChapStick®
  • Crock-Pot®
  • Dumpster®
  • Frisbee®
  • Hula hoop®
  • Jet Ski®
  • Onesies®
  • Popsicle®
  • Styrofoam®

Let us help you avoid costly mistakes involving the proper use of your valuable marks. — Mari Kat Gavin

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