Trademark Incapacity Doctrine or Primary significance test: Which favors Generic mark to be recognized as trademark?

The principal purpose of a trademark is to act as a ‘source signifier’ and not ‘product signifier’. A mark qualifies as a trademark when a new meaning is added to the existing word of lexicon [secondary meaning] or when a new word [fanciful/coined] is engineered to identify the single source of the goods and services. It can be a word, symbol, phrase, design, configuration, colour, sound, shape, packaging and whatnot. Though, not every kind of mark suffices to be a trademark, there are certain words or phrases that do not qualify to be trademarked either because they are too common’ or ‘generic words’ or ‘prohibited marks’ or ‘functional in nature’ and so on.  

To be more specific and effective in narration, this post particularly talks about the capacity of a ‘generic word’ to be capable of source identifier rather than the product identifier. Let us discuss whether it is possible?

The debate surrounding the recognition of generic words” as a trademark is persistently discussed in case laws, academic literature and, so forth, across the globe, where mostly “Generic words” are denied trademark registration on the basis of “Doctrine of trademark incapacity”- also known as “De facto secondary meaning doctrine” and “Abercrombie Spectrum Test”[1]. The Doctrine of trademark incapacity advocates that a word that was once a generic product designation cannot qualify as a trademark even if consumer identifies the term as source signifier. The Abercrombie spectrum classifies the marks depending upon their strength of distinctiveness. [Fanciful-Arbitrary-Suggestive-Descriptive-Generic] [Fanciful marks are the strongest and generic marks are the weakest.]

Recently, interestingly the U.S District Court for the Eastern District of Virginia sustained the trademark protection to BOOKING.COMwhich was upheld by the Fourth Circuit Court of U.S[2]on the ground that the relevant public identified BOOKING.COMas an online hotel reservation service rather than just a company and stated that the district court did not err in holding that BOOKING.COMhas acquired secondary meaning and hence qualifies to be protected as a trademark. Aggrieved by the decision, the United States Patent and Trademark Office [USPTO] approached the United States Supreme Court opposing the protection of BOOKING.COMon the ground that it is generic in nature. The US Supreme Court in November 2019 granted a petition for certiorari filed [here] by the U.S. Patent and Trademark Office (USPTO) requesting the Court to consider the following question:

The question presented is as follows: Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark?

In the month of March 2020, the USPTO filed a reply urging [here] the Supreme Court to reverse the decision of the Circuit court and recently on May 4th 2020, against all the odds, the Supreme Court heard the oral arguments online and streamed the event live for the first time, the decision is pending.

Certainly, this could be a historic case in the context of protection of a trademark for “generic words” if the US Supreme Court upholds the protection of Generic terms. Well, that is yet to be decided.

Let us now have a look at the trademark doctrines and other established generic words to shed some light on the present matter. Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks.  Further, the Abercrombie test [Abercrombie & Fitch co. vs Hunting world, Inc.] [3] supports the view of the doctrine of trademark incapacity and states that strength of mark determines the chances of it being protected as a trademark.  It emphasizes that more the distinctive the term is better the chances of getting trademark protection. There have been many precedents in which doctrine of trademark incapacity has been followed and principal set out by Abercrombie test is followed, such as, Microsoft corporations vs,[4] Harley Davidson case,[5] case,[6] where the court broadly stated that although the subject matter that is a mark, word etc. has gained secondary meaning, yet, it could not be given trademark protection because the term was once generic in nature.  Even Microsoft could not stand a chance to protect the word ‘WINDOWS’ although, it is strongly associated with Microsoft on the ground that Windows was a commonly used term in the industry.[7] Another classic case is of Hotels.Com,[8] where, despite the fact, that 76% of people recognized it as a sour signifier platform for booking and travel purposes, Trademark Trial and Appeal Board (TABB) did not consider Hotels.Com as a trademark.The fact that the word does change its meaning with time has been blatantly ignored by the courts even though there are surveys, evidence procured by the proprietor of a mark which although was generic had acquired secondary meaning.

However, there is a quite convincing argument to protect the generic words as a trademark based on ‘semantic shift’. The Semantic shift is change in the meaning of a word[9], which states how the given word changes its meaning over some time, initially by entering into the lexicon and then by gaining or losing meaning.[10] There have been cases where courts have given more importance to ‘primary significance test’ and refuted trademark incapacity. For example, once the term “kiss” used to be identified as sweetmeat or piece of confection, but later “Kisses” a candy which comes from the Hershey company got trademark protection after several years by proving secondary significance in the market,[11] but in the case of Harley Davidson vs Grottanelli[12] even though 98% of people recognized “HOG” as the source signifier for Harley Davidson bikes, the court refused to recognised HOG as a trademark.

The Trademark Incapacity doctrine has a stricter approach because it does not take into account the consumer perception of a given mark, whereas the primary significance test is more practical and consumer-centric in its approach. Having said that, the yardstick for proving that the market identifies a mark as source signifier and not product signifier is not clear, for instance, in the case of Sparing System co v Delavan[13] court stated if more than 50% of  the consumer in the market identify the mark as source signifying it suffices the requirement whereas in other cases the court stated that showing 30% probative evidence is enough to conclude that mark has attained secondary meaning. [14]

The disparity between the legislation, case laws and the Government Authority that grants registration have complicated the issue as to whether a generic word can be trademarked or “Once a generic always a generic” is the slogan to be followed. The US Supreme court decision in the “BOOKING.COM” case could affect a lot of decisions taken by the USPTO and the future of trademark registration. However, some might argue that protecting “BOOKING.COM” will create a monopoly over the word ‘Booking’, which could be true but the fact that consumer identifies the source with a name is itself a proof of distinctiveness. Isn’t it? Is distinctiveness not the quintessential requirement of a trademark? Also, the argument that the recognition of generic word as a trademark could result in a monopoly, is it true or a cliché?  How do we quantify monopoly in such cases? There are several open-ended similar questions that need robust empirical research in the field of trademark law. Till then, we can wait for the US Supreme Court decision on the discussed issue.

The article continues with a second part discussing how the addition of “.COM” to a generic word, can be protectable under US Trademark Law, by Pranav Gupta (Advocate), LL.M., NYU.

[1] 537 F.2d 4 (2d Cir.1976).

[2] B.V. v. The United States Patent and Trademark Office (4th Cir. Feb. 4, 2019).

[3] 537 F.2d 4 (2d Cir.1976).

[4] 319 F. Supp. 2d 1219 (W.D. WASH. 2004).

[5] 164 F. 3d 806 (2d Cir.1999).

[6] 573 F.3d (Fed. Cir. 2009).

[7] 253 F.3d 34 (2001).

[8] Supra Note No.6.

[9] Jake Lindford, A Linguistic justification for protecting “Generic” Trademark, 17 YALE J.L.&.Tech (2015) Pg.No.140.

[10] See, ELIZABETH CLOSS TRAUGOTT & RICHARD B. DASHER, Regularity in Semantic Change 1 (2002).

[11] Hershey Co. V. Promotion in Motion, Inc.

[12] 164 F. 3d 806 (2d Cir.1999).

[13] 975 F.2d 366, 394 (7th Cir. 1992).

[14] Thomas & Betts Corps V. Panduit Corp, 138 F.3d 277, 295 (7Th Cir.1998).

About Udit Thakran 0 Articles
UDIT is a final year law student specializing in criminal law. With a streamlined focus on learning at every step of the way, he truly believes that erudition can never cease to exist and that knowledge is embedded in every spectrum of life. He embraces love for debating and possesses good oratory and research skills which is the reason for his numerous achievements such as winning Youth Parliament competitions, moot competitions, and various other law competitions. His competitive nature and strive for achieving more have led him to explore various fields of law, which helped him to generate interest in the field of Criminal law, Intellectual property law, Administrative law, International law, and constitutional law. Apart from academics and scholastic activities, he likes to travel to new places, and has a keen interest in trekking, writing motivational quotes, playing Badminton and horse-riding. So here he is to express his part of knowledge and learnings with the readers out there and fulfill the idea that learning and teaching can improvise the better world.

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