Trademarks are signs, logos, symbols, words, phrases, designs, or combinations of these, which identify a specific brand’s product or service. It recognizes the corporate identity of the brand. To sell the product, using the brand name makes it a trademark. However, one should keep in mind that the Trademark Rights arise out of use or maintenance of the exclusive rights concerning some specific products or services.
Trademark Registration provides the exclusive rights to the owner to pursue legal action in case of infringement. We know that brands try to make their trademarks as unique and distinctive as possible to attain the highest level of protection under the Trademark Law. Yet, some proprietors seek to register common phrases or words for their products and services. Some examples include ‘Apple,’ and ‘Sharp.’ Common or generic terms are usually not protected under trademark law. Concerning this, there is a general principle followed worldwide, which says a company cannot claim a generic term to be its proprietary mark. Every business deserves the right to identify the type of goods or services it sells accurately; however, if a single company is allowed to claim trademark rights to a generic term, it will be against the principle of ‘fair competition.’ How are then these common words registered as a trademark? Let us find out some of the ways of trademarking these terms.
Generic terms cannot typically be registered under trademark law, and no protection to the proprietor is provided. If any word is to be adopted as a trademark, it cannot be a term that is primarily understood by people as referring to a ‘product category.’ For example, the term ‘Laptop’ is a generic term, and if a manufacturer is selling ‘Laptop’ brand computers, he or she cannot claim the exclusive right to use that term concerning it.
Acquiring Secondary Meaning
There are two prime elements in a trademark. Firstly, it protects the commercial products and services. Secondly, it identifies the source of goods and services. Therefore, your trademark must be either inherently distinctive, identifying the source of the goods/services, or have ‘acquired distinctiveness.’ Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. The trademark owner must be able to prove that the public identifies his trademark with his particular goods or services. That ‘secondary meaning’ must identify the phrase with a particular good or service.
Courts have often taken into consideration various factors while determining whether a common/generic word has acquired distinctiveness. It includes the length of use, the volume of goods sold, the extent of service provided, the use of an advertising slogan, the generic term being used in combination with other marks, the expense incurred on the advertisement, trade reports, and consumer surveys.
In the case of USPTO vs. Booking.com, the owners of the domain Booking.com had filed applications seeking registration of the trademark BOOKING.COM. The USPTO refused registration of the mark, finding that BOOKING.COM is generic and in the absence of acquired distinctiveness demonstrating a secondary meaning – the addition of a gTLD (generic top-level domain) is inadequate to make a generic word, i.e., booking, distinctive enough for registration. The appellate board did not interfere with the decision. The District Court, in appeal, however, reversed these findings and opined that secondary meaning had been acquired and the marks were therefore registrable. The USPTO was unsuccessful in an appeal to the Fourth Circuit, which concurred with the District Court’s decision. Finally, in July 2020, the US Supreme Court granted Trademark Protection to Booking.com for booking services. The court held that a term styled as ‘generic.com’ being generic for a class of goods or services is eligible for trademark protection if the term is so recognized by consumers.
Since trademarks are registered as per the goods/services they are used to identify, it is possible to register common words but not necessarily for their common goods.
Chocolate, if filed for confectionery goods, would be rejected as it is way too descriptive. However, Chocolate applied for, say music instruments, might be acceptable as it is not the common name one would use to describe a musical instrument. Fundamentally, this comes down to the question of whether other people would likely need to use the same trademark for the same goods/services. Others would have a sincere need to use the word Chocolate for confectionery products but would not need to use Chocolate as a brand or description of a musical instrument.
A great example here is Apple. If filed in connection with apples (fruit), it would be rejected; however, we all know that it is a successful brand (and is registered as a trademark) for computers and related goods/services. The question that arises is, “Why was this allowed?” The answer is that the word ‘apple’ is an arbitrary word when used in connection with the manufacture and sale of computers and computer programs, tobacco products, or educational materials. That is, there is nothing about these products that relate to ‘apples.’ Accordingly, the term ‘Apple’ is indeed a pretty strong trademark, as is the case when you apply a completely arbitrary term (however common it may be) to promote your products or services. If someone wanted to trademark the term ‘Apple’ concerning fruits, the mark would be a generic term for the kind of goods being sold, namely, apples.
Given the above example, an important thing to remember is that just because Apple Inc. has trademarked the word ‘Apple,’ it does not mean that they own the word in all instances. Scholastic Inc. and John Middleton Co. are among the many others that have also trademarked the term ‘Apple’ related to different products. So, trademark registration of a common term in a particular class does not give a proprietor the right to use that term for all goods in various classes.
Common words or phrases are therefore well within the scope of trademark protection as long as the words or phrases in question are not generic for the types of products or services being provided. After all, how else would TIME (the magazine), SHELL (the energy giant), and CATERPILLAR (the equipment manufacturer) have got their trademark registrations? These words are common but not descriptive of the company or its product. As long as the common word is used as a brand name and is not descriptive of the product or service, the chances of success are good. If at all, the words are not arbitrary concerning the goods or services, the proprietor must be able to prove a secondary meaning, which is the consumers identify that trademark with his goods and services, just as in the case of Booking.com. Courts and trademark offices today are gradually recognizing the common phrases that have acquired distinctiveness or are arbitrary concerning the goods or services provided. It is a brilliant step in the right direction for business owners who invest substantial resources in their business and command considerable popularity in the market for ‘common’ terms.