Genericness Archives

Genericness

No Bull: Historically Generic Term Can Become Non-Generic

by Amit Kumar Saha, PhD | Mar 20, 2025 | Trademarks

The US Court of Appeals for the Federal Circuit affirmed Trademark Trial & Appeal Board rulings, finding that a previously generic term was not generic at the time registration was sought because at that time the mark, as used in connection with the goods for which registration was sought, had achieved secondary meaning. Bullshine Distillery LLC v. Sazerac Brands, LLC, Case Nos. 23-1682; -1900 (Fed. Cir. Mar. 12, 2025) (Moore, C.J.; Reyna, Taranto, JJ.)

In 2015 Bullshine sought to register the trademark BULLSHINE FIREBULL for its line of “[a]lcoholic beverages except beers.” Sazerac, the owner of the FIREBALL marks used for liqueurs and whiskey, opposed registration. Sazerac argued that the registration of BULLSHINE FIREBULL would likely cause consumer confusion due to its similarity to Sazerac’s FIREBALL marks. Bullshine counterclaimed, asserting that the term “fireball” had become generic and was commonly used to describe a type of alcoholic drink, thus invalidating Sazerac’s claim to exclusivity.

The Board found that the FIREBALL mark was not generic either at the time of registration nor at the time of trial, and that BULLSHINE FIREBULL was not likely to cause confusion with Sazerac’s marks. The Board determined that the FIREBALL mark was “commercially strong but conceptually weak,” that the respective marks of Sazerac and Bullshine were dissimilar when considered in their entireties, and that Bullshine did not act in bad faith in choosing its marks. The Board denied Sazerac’s opposition to the BULLSHINE FIREBULL mark as well as Bullshine’s counterclaim that the FIREBALL mark was generic. Both parties appealed.

Bullshine argued that the Board applied the incorrect legal standard in finding FIREBALL not generic and that consequently, the finding of non-genericness (upon consideration of secondary meaning) was erroneous. Bullshine argued that since “fireball” was a generic term prior to Sazerac’s registration (as both parties agreed), that fact should have precluded Sazerac’s registration, and the Board erred in considering evidence of secondary meaning. Bullshine argued that if a term was generic at any time prior to registration, it remains generic, regardless of how it might be understood at the time of registration (i.e., once generic, always generic). Sazerac argued that the time to assess genericness is at the time of registration. The Federal Circuit agreed with Sazerac.

The Federal Circuit explained that the genericness inquiry is ultimately guided by “what consumers would think at the time of registration,” and that this ruling is supported by the statutory scheme of the Lanham Act. The Court explained that the Lanham Act, in addition to preventing registration of generic terms, also provides for cancellations of marks “[a]t any time,” and even marks with incontestable statuses can be challenged based on genericness. Therefore, Congress intended that the analysis of whether a term is generic can change over time, and Bullshine’s argument was inconsistent with the statute. This conclusion follows from the legal premise that impression of consumers is “necessarily contemporaneous with the time of registration.”

Bullshine cited the 1961 CCPA decision in Weiss Noodle in support of its argument that [...]

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Beach Buggy Battle: Stipulation Insufficient to Establish Trademark Distinctiveness

by Tim Dunker | Jan 30, 2025 | Trademarks

The US Court of Appeals for the Fourth Circuit found that a district court does not need to accept both parties’ stipulation that a mark is distinctive but instead is permitted to make an evidentiary inquiry in determining whether the mark is distinctive or generic. Moke America LLC v. Moke Int’l Ltd., Case No. 23-1634 (4th Cir. Jan. 15, 2025) (King, Groh, JJ.) (Richardson, J., dissenting).

Starting in the 1960s, British Motor Corporation (BMC) sold vehicles colloquially referred to as “Mokes” in the United Kingdom, Australia, and Portugal. By the time BMC ceased production in 1993, Mokes had garnered a small but devoted following for use as beach buggies in the United States, the Caribbean, and Australia.

In August 2015, Moke International and Moke USA sold their first vehicle using the MOKE mark and subsequently sought trademark registration. One year later, Moke America began US sales of vehicles using the MOKE mark. Both parties described their vehicles as being reengineered and redesigned versions of the BMC Moke.

The present dispute began when Moke America opposed Moke International and Moke USA’s registration based on priority use of the MOKE mark. The Trademark Trial & Appeal Board dismissed the opposition. Moke America then filed a district court complaint seeking a declaration of trademark ownership and asserting trademark infringement. Moke International and Moke USA counterclaimed for a declaration of trademark ownership and trademark infringement, as well as affirmance of the Board’s dismissal.

A party claiming ownership of a mark bears the burden of proving distinctiveness. A generic term is not distinctive. Generic terms in trademark law are those that describe a genus or class of which a particular product is a member, such as “CONVENIENT STORE retail stores, DRY ICE solid carbon dioxide, and LIGHT BEER ale-type beverages.” Generic terms can never be protected. The purpose of denying protection for these terms is to safeguard the public from having commonly used words and phrases removed from the “linguistic commons.” Certain marks that are originally distinctive may become generic through the public’s pervasive use of the term through a process known as “genericide.” Genericide occurs when the trademark ceases to identify the particular source of a product or service to the public and instead identifies a class of product or service. Common examples include ASPIRIN and ESCALATOR.

Since both parties sought ownership of the MOKE mark, the parties stipulated that the mark was distinctive and not generic. The district court found that a stipulation was insufficient and noted that the parties must set forth evidence that the mark was distinctive and not generic. The district court concluded that MOKE was once inherently distinctive but had become generic before either party sold a vehicle bearing the MOKE mark. Both parties appealed.

Seeking to overturn the district court’s finding of genericness, the parties argued that the district court was required to accept their stipulation of the MOKE mark’s distinctiveness. The Fourth Circuit disagreed, finding that blindly accepting a stipulation was incompatible with the court’s role of [...]

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It’s an Old Tune: Third-Party-Use Evidence From Long Ago Can Support Genericness

by Joshua Revilla | Jul 18, 2024 | Trademarks

The US Court of Appeals for the Fifth Circuit found that the district court abused its discretion in wholesale exclusion of evidence on the issue of genericness. The evidence was offered to show prior use of a trade dress from more than five years prior to an alleged infringer’s first use of a mark. Gibson Inc. v. Armadillo Distribution Enterprises, Inc., Case No. 22-40587 (5th Cir. July 8, 2024) (Stewart, Clement, Ho, JJ.)

Gibson filed trademark infringement and counterfeiting claims against Armadillo Distribution Enterprises in 2019, alleging that Armadillo infringed four of Gibson’s trademarked guitar body shapes, one guitar headstock shape and two word marks. Just before trial, the district court made several evidentiary rulings on the parties’ motions in limine, including one in which Gibson sought to exclude all arguments and evidence related to advertisements or sales of third-party guitars before 1992, arguing they had limited probative value and were unduly prejudicial. Gibson argued that any third-party-use evidence should be restricted to a five-year period from 1992 to 1997. In its first exclusion order, the district court found that evidence of third-party use was relevant to determining whether a mark was generic or unprotectable but concluded that the probative value of the evidence from before the 1990s was low and found that the five-year cutoff date was reasonable. Armadillo objected to that ruling, leading to oral argument and a second exclusion order upholding the first order. The district court relied on Federal Rule of Evidence (FRE) 403 and the 2018 Federal Circuit ruling in Converse v. International Trade Commission to support this wholesale exclusion of evidence prior to 1992.

The parties proceeded to trial in mid-2022. A jury found that Armadillo infringed all of the trademarks other than one word mark and found that Armadillo marketed counterfeits. Armadillo appealed based on the district court’s exclusion of decades of third-party-use evidence. Armadillo asserted that this evidence was central to Armadillo’s counterclaim seeking cancellation of the marks and its main defense of genericness.

The Fifth Circuit first considered the district court’s reliance on Converse and determined that the district court abused its discretion in excluding the third-party evidence predating 1992. Armadillo argued that reliance on Converse was error because that case concerned secondary meaning and not genericness. Gibson countered that genericness and secondary meaning are closely related issues and that the five-year period predating infringement is the most logical measuring line. Alternatively, Gibson argued that 15 U.S.C. § 1064 would bar evidence predating 1992 because it provides that a petition to cancel a mark’s registration must be filed within five years from the date of registration of the mark.

The Fifth Circuit found that Converse did not rule that third-party-use evidence from more than five years prior to the alleged infringer’s first use was irrelevant to the issue of genericness and did not compel a strict five-year limitation of third-party-use evidence. The Court further reasoned that under Converse, evidence of prior use is relevant if such use was likely to have [...]

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Zero Hero: Disclaiming Disputed Term Renders Dispute Moot

by Paul Devinsky | Apr 15, 2021 | Trademarks

The Trademark Trial & Appeal Board redesignated as precedential a decision dismissing a beverage company’s opposition to trademarks using the term “ZERO” for zero-calorie drinks after the trademark applicant disclaimed the term ZERO in its pending applications, the sole remedy requested in the opposition. Royal Crown Co., Inc. v. The Coca-Cola Co., Opposition Nos. 91178927 (Parent Case); 91180771; 91180772; 91183482; 91185755; 91186579; and 91190658 (TTAB May 3, 2019) (redesignated precedential Mar. 30, 2021) (Hightower, ATJ). The US Court of Appeals for the Federal Circuit agreed with the Board’s decision, holding that disclaiming the term ZERO rendered the dispute moot. Royal Crown Co., Inc. v. Coca-Cola Co., Case No. 19-2088 (Fed. Cir. Aug. 3, 2020) (Lourie, J.)

Royal Crown and Coca-Cola are competitors in the beverage market. Coca-Cola filed 16 applications to register marks appending the term ZERO to some of its existing beverage brands, such as Coke Zero, Coke Cherry Zero and Sprite Zero. Royal Crown filed oppositions to each of the 16 applications (later consolidated), arguing that the marks were generic or merely descriptive of the beverages’ zero-calorie attributes, and that the registrations should be denied without a disclaimer of the term ZERO. The Board initially held that Coca-Cola’s applications could be registered without a disclaimer of the term ZERO, finding that Royal Crown failed to show that ZERO was generic for zero-calorie products in the genus of soft drinks, sports drinks and energy drinks, and that Coca-Cola proved that the term ZERO had acquired distinctiveness for soft drinks and sports drinks, although not for energy drinks. On appeal, the Federal Circuit vacated the decision and remanded the case back to the Board with instructions to apply the correct legal standard for genericness of the term ZERO, including examining whether the term ZERO referred to a key aspect of the genus when appended to a beverage mark, and to make an express finding regarding the degree of the mark’s descriptiveness.

On remand, the Board ordered the parties to rebrief certain issues. Instead, Coca-Cola filed an unconsented motion to amend each of its applications to disclaim the term ZERO. Coca-Cola argued that the disclaimer rendered the remaining issues in the case moot and that no further action was required by the Board. Although disclaimer was the sole remedy Royal Crown originally sought in its oppositions, Royal Crown protested that the disclaimer was procedurally improper and not case-dispositive. Royal Crown argued that its requested relief included a determination that ZERO was generic or merely descriptive, and that while a disclaimer was the manner in which that relief was demonstrated, a disclaimer did not moot the legal issues raised. Royal Crown asked the Board to defer ruling on the motion to amend until it had issued a full decision on the merits.

Agreeing with Coca-Cola, the Board found that since the disclaimer was the relief sought by Royal Crown and the form of the disclaimer was acceptable, entered the disclaimer and dismissed Royal Crown’s opposition.

Practice Note: In the original appeal from [...]

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Supreme Court: “Booking.com” Can Be Registered as Trademark

by Robert W. Zelnick | Jul 15, 2020 | Trademarks

By an 8-1 vote, the Supreme Court rejected a per se rule by the US Patent and Trademark Office (PTO) that a generic word followed by “.com” is necessarily generic and therefore ineligible for trademark protection. U.S. Patent and Trademark Office et al. v. Booking.com BV, Case No. 19-46 (Supr. Ct. June 30, 2020) (Ginsberg, Justice) (Sotomayor, Justice, concurring) (Breyer, Justice, dissenting). In so doing, the Supreme Court found that the proper test for whether “booking.com” is eligible for trademark protection for travel booking services is whether the public perceives “booking.com” as identifying a single source.

Trademarks identify and distinguish the goods and services of a single party, and the Lanham Act establishes a system of trademark registration. Among other requirements for registration, a trademark must be distinctive, as judged along a spectrum of trademark distinctiveness. Distinctive trademarks, in order of most to least strength, include fanciful or made-up words (e.g., KODAK); arbitrary marks that are existing words that have no connection to the underlying goods or services (e.g., CAMEL cigarettes); and then suggestive marks, which require some mental thought to connect them to an attribute of the products or services (e.g., TIDE laundry detergent). Descriptive words are not inherently distinctive (e.g., BEST BUY), but can still be protectable and registerable upon proof of acquired distinctiveness (i.e., secondary meaning) arising from extensive use and advertising by the trademark owner. At the low end of the spectrum of distinctiveness are generic terms, which merely refer to a category or class of goods or services (e.g., wine or art) and are therefore never protectable or registerable as trademarks.

The PTO refused registration for “Booking.com,” citing policy developed from a 132-year-old Supreme Court case which held that the addition of “Company” to a generic word does not render the resulting name (i.e., Generic Company) distinctive. See Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888). After the Trademark Trial and Appeal Board (TTAB) affirmed the refusal of registration, Booking.com appealed to the US District Court for the Eastern District of Virginia, which reversed the refusal of registration, finding that “‘Booking.com’—unlike ‘booking’—is not generic. The district court found that the consuming public primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” The US Court of Appeals for the Fourth Circuit affirmed the judgment of the Virginia federal court (IP Update, Vol. 22, No. 3), and the PTO sought certiorari from the Supreme Court.

The Supreme Court granted certiorari (IP Update, Vol. 22, No. 11), and Justice Ruth Bader Ginsberg delivered the opinion of the Court, with which six other justices joined. Justice Sotomayor filed a short concurring opinion, and Justice Breyer dissented. The question under review by the Court was “whether the addition by an online business of a generic top-level domain (.com) to an otherwise generic term can create a protectable trademark.

Both parties in Booking.com agreed that “booking” is generic for the kind of travel [...]

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