Introduction
The USPTO does not recommend trademarking a generic term; nevertheless, if the mark obtains distinctiveness, it may be granted in some situations. The government agency that reviews US trademark application is the United States Patent and Trademark Office (USPTO). It is critical to recognise that registering a trademark does not provide you eternal rights to use it. You must continue to use your mark for as long as you wish to keep it registered, and you must renew it every ten years from the date of registration.
This precise subject has resulted in much discussion and legal dispute. The USPTO has now issued a provisional denial to our client’s application on the basis that the term MUST is not distinctive.
Combination of words
A trademark is a term, phrase, symbol, or design, or a combination of words, phrases, symbols, or designs, that identifies and differentiates the source of one party’s goods from those of another. A service mark is the same as a service trademark. Trademarks indicate exclusive rights in certain sectors and are not used to describe items (as trademarks).
What is it about trademarks that makes them so important to businesses? They are, after all, what customers interact with when they purchase your goods. Think at it this way: “I’m going to buy this brand because I trust them,” and you’ll see how significant trademarks are!
The examiner also referenced a plethora of third-party usage of MUST, suggesting that the term(s) are “commonly used in line with its usual meaning and would be understood by potential customers in that manner.”
The Board of Directors concurred
The Board of Directors concurred. It held in its decision that: (1) the term MUST is not inherently distinctive, and nothing about the applicant’s use of MUST to describe a characteristic or feature of its goods makes it inherently distinctive; (2) the applicant’s use of MUST as a stylistic identifier (or “brand”) for its goods does not make it inherently distinctive; and (3) there is no evidence to show how consumers perceive Applicant’s product as being different from other products bearing similiar names.
We objected to this assumption and gave arguments against it by referencing many rulings from the United States Court of Appeals for the Federal Circuit as well as opinions from United States District Courts.
The USPTO does not recommend trademarking a generic term. In other words, while applying for a trademark registration , it is critical to note that simply because you have used your brand in commerce for five years or longer does not make it unique or registrable. The USPTO examines your application using specific criteria outlined in Section 2(f) of the Lanham Act (15 U.S.), which states that “a mark cannot be registered if its use would be likely to cause confusion” – even if you believe your mark deserves protection because it has acquired distinctiveness through secondary meaning as a result of prolonged use in commerce.”
The use of generic terminology to describe a product or service is prohibited under trademark law.
A generic term is one that describes a product or service. The use of generic terminology to describe a product or service is prohibited under trademark law.
For example, if you were marketing an app for managing hectic schedules, you would call it “Easy Schedule Manager.” The term “easy” has grown so ubiquitous that it is unlikely to be protected as a trademark on its own. However, Easy Schedule Manager may be deemed part of your trademark since the combination of terms makes it distinctive and protects the brand from being used on comparable products or services by rivals (for example: Easy Scheduler).
Although the USPTO does not recommend trademarking a generic term, it may be granted in rare situations if the mark obtains distinctiveness.
It is not advisable to trademark a generic term. The USPTO does not think it is a smart idea, and has rejected several applications that tried to trademark terms that were deemed too generic. There are, however, several instances in which the mark obtains distinctiveness and may still be issued.
The problem with attempting to obtain a trademark for a common word is that it will be difficult to demonstrate that others are not also using your mark. For example, if you were to trademark “the,” everyone would know what you’re talking about; but, this might make it difficult for other organisations who want to connect their own brand names or logos with certain products or services since everyone will be using them!
The government agency that reviews trademark applications is the United States Patent and Trademark Office (USPTO).
A trademark must be filed with the USPTO. The government agency that reviews trademark applications is the United States Patent and Trademark Office (USPTO). The application process is short and clear, and enrollment offers several advantages.
Once you acquire a trademark, it is critical to monitor its status both within and outside of the United States. The USPTO only registers trademarks for use inside the United States; if you want your brand name or logo to be protected outside of the United States, you must apply via IP offices in each nation where it will be used.
It is critical to recognise that registering a trademark does not provide you eternal rights to use it. While there are various ways to renew your mark, you must complete a renewal application before the deadline or risk losing your exclusive rights to the mark.
A renewal application can be filed up to six months before your registration expires (USPTO Trademark Manual of Examining Procedure 903). It is advised that you file at least three months in advance to provide the USPTO time to process your application.
If you do not file by then, your registration will expire and become available for use by anybody else—and because a registered trademark appears to be a sign of quality assurance on products and services, this might harm your branding efforts in the future.
You must continue to use your mark for as long as you wish to keep it registered, and you must renew it every ten years.
You must continue to use your trademark for as long as you wish to keep it registered, and you must renew it every ten years from the date of registration.
If you do not submit a renewal USPTO trademark application before the end of the ten-year period, or if you do not utilise your mark in commerce (more on this later), your online word will be deleted from the USPTO database and become available for claim by anyone else. If someone person claims your online word while you are using it, they can stop you by filing an opposition with the USPTO.
The good news is that there is a solution to this issue! You can extend your rights until 20 years from the initial registration date by filing a new trademark application six months before the end of your existing registration period.
Conclusion
The most essential thing to remember when deciding whether to trademark a term is that the USPTO considers all usage of that word in the context of how they are used. So, if your usage of a generic word is particular enough, you might be able to trademark it. This implies that if someone else’s use of the same word is general and wide, there may be no dispute between your marks because their meanings do not overlap.
