By Daniel H. Bliss
Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on genericness? If so, what is the appropriate time period for assessing whether a trademark is generic? Is the appropriate time period at the time of registration or subsequent to the date of registration? The answer is YES! for both if the trademark was either generic at the time of registration or subsequent to the date of registration.
Section 2(e) of the Lanham Act states that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— … (e) [c]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 …”. See 15 U.S.C. §1052. “Descriptive” includes generic terms because a generic term is the “ultimate in descriptiveness,” Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358, 1366 (Fed. Cir. 2018), and is “ineligible for federal trademark registration,” U.S. Pat. & Trademark Off. v. Booking.com B.V., 591 U.S. 549, 551 (2020) (Booking.com).
What is a generic term? A generic term is the name for the good (e.g., “furniture”) or service (e.g. “care”) itself and is therefore ineligible for registration. See 15 U.S.C. § 1052. Although a trademark can be generic at the time of registration and be denied registration, can a trademark registration be invalidated for genericness of the trademark at any time after registration?
A trademark registration that was obtained on the Principal Register “… shall be prima facie evidence of the validity of the registered mark and of the registration of the mark … but shall not preclude another person from proving any legal or equitable defense or defect …” See 15 U.S.C. § 1115(a) (Emphasis Added). For trademark registrations, one of the grounds for cancellation is that the trademark has become generic. See 15 U.S.C. §1064. For example, under U.S. trademark law, a petition for cancellation may be filed any time if the registered trademark becomes the generic name for the goods or services, or a portion thereof.
What is the test for genericness of a trademark? The test for genericness of a trademark is a two prong test in which (1) the genus of goods or services at issue is first identified and (2) an assessment of whether the public understands the mark, as a whole, to refer to that genus. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 966 (Fed. Cir. 2015) (emphasis omitted); see also id. at 969 (“the relevant public’s perception is the primary consideration in determining whether a term is generic”); Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 640–41 (Fed. Cir. 1991) (“this court has stated that whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public”). The evidence of what the relevant consumers thought of the generic term is at the time of registration. Sazerac Brands, LLC v. Bullshine Distillery LLC, No. 91227653, 2023 WL 2423356, at *20 (Mar. 6, 2023).
If there is a cancellation involving a trademark registration with either the USPTO or the court, what is the appropriate time period for assessing whether the trademark is generic? In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), Bullshine Distillery LLC v. Sazerac Brands, LLC, 2023-1682, 2023-1900 (Decided March 12, 2025), the CAFC held that the proper time period to evaluate whether a mark is generic is at the time of registration. In Bullshine Distillery, Bullshine Distillery LLC sought cancellation with the Trademark Trial and Appeal Board (“TTAB”) of Sazerac Brands, LLC’s (“Sazerac”) trademark registrations for FIREBALL because the term “fireball” was allegedly a “generic name for a [whiskey or liqueur/schnapps-based] common alcoholic drink” that contained a “spicy flavoring element such as cinnamon or hot sauce”. The TTAB found that “fireball” was not generic at the time of registration of Sazerac’s trademarks. Although both parties appealed the TTAB decision, one of the issues on appeal was the appropriate time period for assessing whether a mark was generic. The CAFC looked to the language of Section 2(e) of the Lanham Act, noting that the Lanham Act not only prevents registration of generic terms, but also provides for cancellation of trademarks “[a]t any time,” they become generic. The CAFC determined that the proper time to evaluate whether a term is generic in the first instance is at the time of registration, which is a
question of fact. The CAFC held that the TTAB’s finding that FIREBALL was not generic at the time of registration was supported by substantial evidence and affirmed the decision of the TTAB.
In summary, a trademark can be refused registration because it is the name of the good or service and therefore generic. After the trademark has been registered, U.S. trademark registrations can be cancelled based on genericness at the time of registration or subsequent to the date of registration. The test for genericness of a trademark is a two prong test in which the genus of goods or services at issue is identified first and an assessment of whether the public understands the mark, as a whole, to refer to that genus. If there is a cancellation of a trademark registration that is filed with either the USPTO or the court, the appropriate time period for assessing genericness of the trademark is based on the evidence at the time of registration. If the trademark was not generic at the time of registration, the trademark may be found generic subsequent to the date of registration based on evidence.