When Trademarks Lose Protection: The Genericness Defense

When you imagine a trademark, you may picture iconic brand names such as Coca-Cola or Nike. These companies have invested millions of dollars into building recognition for their brand names, and trademark law provides them with exclusive rights to use these names in connection with their products. But what happens when a trademark becomes so popular that people begin to use it as a common word for an entire category of products? This is a situation where intellectual property law can get complicated, and brands may lose their valuable trademark protections.

Under federal law, trademarks start with a “presumption of validity.” This means that, once a trademark is officially registered with the U.S. Patent and Trademark Office, the law assumes it’s a valid mark that deserves protection (15 USCS § 1115). The trademark gets the benefit of the doubt – if someone wants to challenge it, they have the burden of proving a fault in its validity. However, this protection is not absolute. There are a number of ways a trademark can lose its validity, one of them being when it becomes “generic.”

A generic term is simply a word that people commonly use to describe a type of product, as opposed to the specific brand; for example, “computer” or “phone” rather than “Mac” or “iPhone.” They depict categories of products generally. This is an important distinction because generic terms cannot function as trademarks under any circumstances. The tricky part arises when a word begins as a specific brand name and then evolves into a term that everyone uses more broadly. Trademarks you may not know include “escalator,” which was originally a trademark of the Otis Elevator Company, and “zipper,” which was originally a trademark for boots made by the B.F. Goodrich Company. These companies lost their exclusive trademark rights when the public began to prevalently use these brand names as the common way to refer to entire categories of products.

In determining whether a trademark has become generic, courts focus on what the term means to ordinary consumers. According to 15 USCS § 1064, the legal test assesses the “primary significance of the registered mark to the relevant public.” Essentially, when people hear the word, do they think of a specific brand or a type of product?

In practice, courts use a test of competitive fairness. A trademark will not be found to be generic until it has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the mark to designate the product they are selling. If a brand name has become the standard way for the public to refer to a kind of product, then other companies in that market would be unfairly handicapped if they were barred from using that same descriptor for the same type of product.

Courts look for concrete evidence to support the standard of widespread generic use. The evidence that matters most includes how competitors use the term, how the media uses the word, how the trademark owner itself uses the term, dictionary definitions, and consumer surveys. An example would be a survey indicating that consumers think “Kleenex” refers to all tissues rather than the specific brand. This would support a genericness defense.

The consequences of losing a trademark cannot be understated. A registered trademark may be canceled at any time if it becomes the common name for its product type. This means that a company can lose all its protections for a term, regardless of time and money spent on brand recognition. The takeaway is that, ironically, successful branding can become its own downfall. Linguistic trends carry a lot of weight in the marketplace; therefore, it is important for businesses to maintain distinction in their advertising.

Written by J. Rockne Hurley under the supervision of Jon Rogers. Rockne was a 2025 Summer Associate at May Oberfell Lorber, LLP and is going into his third year at the University of Mississippi School of Law. Jon Rogers is a partner at May Oberfell Lorber, LLP with extensive trademark experience.

This article is for information purposes only and is not intended to constitute legal advice.