As I discussed in this article for TheSolopreneurLife.com last year, “generic” terms cannot be protected as trademarks. Trademarks serve the function of distinguishing product and service providers in the marketplace, and generic terms fail to serve this purpose because they simply identify products/services themselves — and not their source of origin.
This is a critical rule to keep in mind, and my prior article provides a more in-depth discussion of what can and cannot be protected as a trademark.
Importantly, however, deciding whether a term is “generic” might not be as clear-cut as you would think. A recent trademark proceeding involving banking and investment giant ING makes this point clear.
ING applied to register the phrase “Person2Person Payment” as a trademark with the United States Patent and Trademark Office for use in connection with, “electronic funds transfer via electronic communications networks . . . processing and transmission of bills and payments thereof” (remember, trademarks are tied to specific “classes” of goods and services). However, the USPTO refused ING’s registration application, concluding that “Person2Person Payment” was merely a generic description of ING’s funds transfer services.
Despite ING’s arguments to the contrary, the USPTO concluded that “‘person to person payments’ is well-established in the financial payments industry as a term of art with specific meaning identical to the usage that applicant intends.” In English, this means that ING’s proposed trademark is merely a generic term for the services that it (and its competitors) provide.
Lessons for Solopreneurs
It is clear that even somewhat creative phrases (“Person2Person” instead of “Person-to-Person”) can still be deemed generic and not subject to trademark protection. This is a critical point that solopreneurs need to keep in mind when developing brand names for their goods or services.
While ING no doubt has plenty of funds to risk the filing fees and attorneys’ fees involved in filing for registration and appealing a denial, for most solopreneurs the clearance and filing costs alone can be a critical investment.
It is also important to note that the USPTO trademark examiners perform independent research when they think a proposed trademark might actually be a generic term in the relevant industry.
In the ING case, the trademark examiner researched and found numerous online payment processors who used “Person-to-Person” and other similar terminology to describe their services. This went a long way toward defeating ING’s attempt to claim exclusive rights in its “Person2Person” phrase.
Thus, solopreneurs should be very cautious about attempting to “sneak” a generic trademark through the trademark registration process.
Selecting a Protectable Trademark
In developing new trademarks, solopreneurs need to keep this principle in mind, and select words and phrases that can set themselves apart from the competition.
Solopreneurs should also seek to develop trademarks that are sufficiently unique from those already out there on the market. Deleting spaces, reorganizing words, and using derivatives only invite disputes, and generally will be insufficient to create a unique and protectable trademark.
The trademark-development process starts with understanding principles such as these. By informing yourself about these types of issues, you can avoid wasting time and money, and also avoid unnecessary risk exposure. Then, when it comes to the next steps of clearance-research and applying for registration, your business will be in the best position possible for adopting a valuable and protectable trademark.
This article is provided for informational purposes only, and does not constitute legal advice.
Jeff Fabian is the owner of Fabian, LLC, a boutique law firm that assists business owners in protecting their brands so that they can stay focused on running their businesses. Visit eTrademarkSolutions.com for more information, or follow Jeff on Twitter @jsfabian. Is your brand at risk? Find out in Fabian, LLC’s free e-course.