One of the fundamental principles of trademark law is that certain terms cannot function as trademarks because, as being merely descriptive of the goods or sources, these marks lack the role as an origin of source of those goods or services. Section 2(e) of the Lanham Act[1] codifies the mere descriptiveness principle, prohibiting registration of marks that are “merely descriptive or deceptively misdescriptive” of goods or services.[2] While this provision primarily addresses descriptiveness, it connects directly to the broader concern about generic elements or terms—words that refer to the general category of goods or services rather than identifying a particular source.
The Generic Term Problem
A generic term is the common name for a product or service. The USPTO defines a “generic mark” if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”[3] The official test for genericism is:
- What is the genus of goods or services at issue?
- Does the relevant public understand the designation primarily to refer to that genus of goods or services?[4]
This inquiry looks at the public perception of that mark at the time the mark is registered. The analysis looks at whether the public understands the term to be generic, and not whether the public uses the term to refer the genus of goods or services. Think “aspirin” for pain relievers or “escalator” for moving staircases—both once-protected trademarks that became generic through common usage. Generic terms can never receive trademark protection because allowing one company to monopolize the common name for a product, creating a marketplace that unfairly prevent competitors from describing what they sell. Once generic, always generic—there’s no path to protection.
Federal Circuit Guidance
The Court of Appeals for the Federal Circuit, which hears appeals from the Trademark Trial and Appeal Board, has provided some guidance on genericism. In In re Cordua Restaurants, Inc.,[5] the court examined whether CHURRASCOS could be registered as a trademark for restaurant services, and held that the appellant could indeed register the mark.
In a domain name-related case, In re 1800Mattress.com IP, LLC,[6] involved the registration of MATTRESS.COM. The Federal Circuit held that combining a generic term with a generic top-level domain like “.com” doesn’t create a protectable mark. The court reasoned that such combinations fail to distinguish the applicant’s services from others in the industry—essentially, MATTRESS.COM merely indicates a website about mattresses. However, in In re Steelbuilding.com,[7] the Federal Circuit held that STEELBUILDING.COM is not generic for the recited service “computerized on line retail services in the field of pre-engineered metal buildings” because of evidence that the mark had acquired distinctiveness, or secondary meaning beyond its generic understanding.
In a more recent case, in In re Bayou Grande Coffee Roasting Co.,[8] the Federal Circuit held that KAHWA was not generic for cafes or coffee shops because the record did not indicate any cafes or coffee shop in the U.S. as selling kahwa, a very specific type of green tea only grown in Kashmir.
The Practical Impact
For businesses considering new trademarks, the lesson is clear: choose terms that identify your product, not terms that describe the product category itself. “Apple” for computers is highly distinctive; on the other hand, “Computer Store” for desktop computers is not. The strongest trademarks are arbitrary (like Apple) or fanciful (completely made-up terms like Kodak), while generic terms provide no protection at all. The line between generic, descriptive, and distinctive is subtle, but getting it right is essential for long-term trademark protection.
If you should have any questions on generic marks, descriptiveness, or trademark law, please contact Yonaxis I.P. Law Group.
[1] 15 U.S.C. §1052(e).
[2] “ No trademark . . . shall be refused registration . . . unless . . . (e): “onsists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable . . . , (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.”
[3] See TMEP 1209.01(c)(1); see also USPTO v. Booking.com B.V., 591 U.S. 549, 556-57 (2020); Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965 (Fed. Cir. 2015).
[4] See Bullshine Distillery LLC v. Sazerac Brands, LLC, 130 F.4th 1025, 1030 (Fed. Cir. 2025).
[5] 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
[6] 586 F.3d 135, 92 USPQ2d 1682 (Fed. Cir. 2009).
[7] 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005).
[8] ___4th___, Case No. 24-1118 (Fed. Cir. December 9, 2025).