Trademark law is designed to protect consumers from confusion as to the sources of products or services.  Strong trademarks are those that are distinctive – that is, they are capable of identifying the source of a particular good.  At the other end of the trademark spectrum are generic marks.  These marks are incapable of functioning as trademarks because they have come to be identified by the relevant purchasing public as common names for the goods or services with which they are associated.  A finding that a mark has become or is generic means that it has lost (or has never had) the ability to identify the source of a product or service, and thus cannot function as a trademark.  For this reason, a finding that a potential mark is “generic” presents a serious problem to a trademark application because it means that a mark has become synonymous in the public’s mind with a particular product or service as opposed to its source.

Dr. Earth, a California organic gardening company, learned this lesson after a lengthy legal battle in which its trademark application for PROBIOTIC was ultimately denied by the U.S. District Court for the Eastern District of Virginia.  Dr. Earth sought to register the word PROBIOTIC for fertilizers.  The U.S. Patent and Trademark Office (PTO) Examiner initially refused registration, stating that the term was generic in connection with fertilizer, and that at most, the term was merely descriptive and had not acquired a secondary meaning.  Merely descriptive marks are similar to generic marks and are considered “weak” marks because they simply convey information about a function, characteristic, or purpose of the goods or services.  As Jeffrey Davidson states in his IP Registration and Enforcement blog, “[d]escriptive terms by their very nature apply to all goods of a particular type, and therefore do not identify any single source.”  Nonetheless, merely descriptive marks can become distinctive of a source by achieving “secondary meaning.”  Daniel A. Tysver, of the comprehensive Bitlaw Legal Resource, notes that if evidence such as long term use or large amounts of advertising and publicity can show that a mark has achieved this “‘second meaning’” (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed.”