Can U.S. Can U.S. Trademark registrations be cancelled for genericness? International Lawyers Network
Suppose you have a U.S. registration for your trademark for goods or services in your business. Can your trademark registration with the U.S. Patent and Trademark Office be cancelled based on genericness? What is the best time period to determine if a trademark is generic if it is possible? Is it at the time of registration, or after the date of registration that the appropriate time period is? 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. SS1052. “Descriptive terms” include generic terms, because a generic word is “ultimately descriptive”, Royal Crown Co., Inc. Cir. Cir. & Trademark Off. v. Booking.com B.V., 591 U.S. 549, 551 (2020) (Booking.com).
What is a generic term? A generic term is a name for a good (e.g. “furniture”), or service (e.g. “Care” is not eligible for registration. See 15 U.S.C. SS 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. SS 1115 (a) (Emphasis Added). One of the grounds to cancel trademark registrations is that the mark has become generic. See 15 U.S.C. SS1064. What is the test to determine whether a trademark is generic? The test for the genericness of a mark is a two-pronged test that involves identifying the genus or goods or services in question and assessing whether the public understands a trademark as a whole to refer to the genus. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 966 (Fed. Cir. 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 (Fed. Cir. At 969 (“the public’s perception of a term is the primary consideration when determining whether it is generic”); Magic Wand, Inc. Cir. 1991) (“This court has stated that the understanding of the mark by the buying public is what determines whether a term deserves trademark status”). Evidence of what relevant consumers thought about the generic term at the time registration. Bullshine Distillery LLC, no. 91227653, 2023 WL 2423356, at *20 (Mar. What is the correct time period to assess whether a trademark is generic if there is a cancellation of a trademark registration at the USPTO? In a recent case, Bullshine Distillery LLC v. Sazerac Brands, LLC, (2023-1682,2023-1900) (Decided on March 12, 2025), before the United States Court of Appeals of the Federal Circuit, the CAFC held the appropriate time period for evaluating whether a trademark is generic was at the time of its registration. Bullshine Distillery LLC filed a cancellation request with the Trademark Trial and Appeal Board (TTAB) for Sazerac Brands, LLC (“Sazerac”) for the trademark registrations of FIREBALL. The company claimed that the term “fireball”, was a generic name for a
commonly consumed alcoholic beverage containing a “spicy flavouring element, such as cinnamon or spicy sauce”. The TTAB determined that “fireball” wasn’t generic at the time Sazerac registered its trademarks. Both parties appealed against the TTAB’s decision. One of the issues that was raised on appeal was when to assess whether a trademark was generic. The CAFC referred to Section 2(e), of the Lanham Act. It noted that the Lanham Act does not only prohibit the registration of generic terms but also allows trademarks to be cancelled “
t anytime” they become generic. The CAFC determined the best time to determine whether a term was generic in the initial instance is when it was registered, which is a[whiskey or liqueur/schnapps-based]question. The CAFC found that the TTAB had a substantial basis for finding that FIREBALL wasn’t generic at the time it was registered. It affirmed this decision. The cancellation of U.S. trademarks registrations is possible after the trademark has been registered. This can be done based on the genericness of the mark at the time of registration, or later. The test to determine whether a trademark is generic is a two-pronged test. First, the genus or class of goods or services is identified. Next, the public is asked to assess whether they understand the mark as a whole to refer to the genus. If a trademark registration is cancelled by the USPTO, or a court, the appropriate period to assess the genericness of the mark is based on evidence at the time the registration was made. If the trademark was generic at the time it was registered, it may be found generic after the date of registration on the basis of evidence.[a]
