It is a fundamental principle of U.S. trademark law that to serve as a trademark, a word or phrase must “indicate the source” of the goods or services with which it is associated and, conversely, that a term that is understood to be the common name of a good or service is “generic” and cannot be protected as a trademark. Yet it still seems difficult to determine exactly what each concept means, particularly when the actual “source” of any goods or services might be opaque to consumers.
In part, this difficulty comes from the fact that status as a trademark or as a generic term is necessarily contextual. The Supreme Court’s 2020 opinion in United States Patent and Trademark Office v. Booking.com B.V. emphasized the relevance of consumer understanding to this inquiry. Words are not inherently generic or distinctive out of context; APPLE is a trademark for computers but not for fruit.
Although individuals encounter trademarks in a variety of settings, we ultimately care about this understanding in the context of a consumer’s experience, since that is where relevant confusion is operationalized. To use a supermarket analogy, the consumer is, at least conceptually, first searching for the right aisle (“soft drinks” or “colas”) and then searching among the shelves for the product they want (“Pepsi” rather than “Coca-Cola”). The genericism inquiry is therefore about assessing terms to determine whether they are related to an aisle search or a shelf search.
Framing the inquiry in this way can help us to see that the question is ultimately about consumer understanding of terms, not consumer use of terms. Looking at how consumers talk about trademarks, whether through corpus analysis, surveys, dictionaries, or other sources, can be helpful, but it is equally important to consider how consumers understand those communications. By thinking of trademarks as elements of conversations among consumers, and borrowing from Gricean implicature, we might be able to determine whether a term is related to finding the right aisle or related to finding the right product on the shelf.
39 Cardozo Arts & Entertainment Law Journal 955-987 (2021)
Heymann, Laura A., "Trademarks in Conversation: Assessing Genericism After Booking.com" (2021). Faculty Publications. 2071.