Generic or Descriptive Service and Trademarks

The policy behind trademark law is to reward owners who are able to provide a consumer with a mark that sufficienly and reliably serves as an indicator for the source of a product or services characteristics or quality.  Two doctrines that ensure that this policy behind service or trademark law is protected are the genericness and distinctiveness doctrine. 

A mark that becomes generic for the product or service provided under it often loses legal protection.  For example, kleenex is sometimes considered to be a generic term for tissues.  Often how a trademark owner uses a mark in advertising campaigns and to promote its product or service may lead to a genericness problem.  See, Trademark Manual of Examining Procedure (TMEP) 1209.01 (c).   

The descriptiveness doctrine, prevents an individual from obtaining trademark protection for a term that describes the product or service sold under it.  For example, “Suits for You”, for a company that provides suits may have difficulty obtaining trademark protection, because it describes that the company is going to provide suits.  Without demonstrating a secondary meaning the “Suits for You” trademark may be rejected for a descriptiveness problem.  See. TMEP 1209.01 (b).

It is important for entrepreneurs, family businesses, individuals, small and mid-size companies to take these doctrines into consideration in developing the appropriate advertising and branding strategies.  Consulting a trademark attorney in selecting a mark and developing a branding strategey can help overcome these potential obstacles to obtaining trademark protection.  These are just two of the many basis that the USPTO will consider in performing a substantive examination of a trademark application.

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