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Posted by James Juo | Mar 22, 2023 | 0 Comments

“A generic name—the name of a class of products or services—is ineligible for federal trademark registration.” USPTO v. B.V., 140 S. Ct. 2298, 2301, 2020 USPQ2d 10729 (2020). “A generic term, by definition, identifies a type of product, not a particular source.” In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1011 (Fed. Cir. 1987).

Also, a term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, or refers to a key aspect of that genus, even if the public does not understand the term to refer to the broad genus as a whole. Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018); In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“the term ‘pizzeria' would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants”).

The genericness inquiry is a two-part test: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?” In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (quoting Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)).

Light Up Clothing

The TTAB recently noted that a key aspect of Applicant's LYTE UP CLOTHING goods is that they illuminate or “light up.” In re Lyte Up Clothing, Ser. No. 90104580 (TTAB Mar. 2, 2023).

          The name of a key aspect, a central focus or feature, or a main characteristic of goods may be generic for those goods. In re Cordua Rests., Inc., 118 USPQ2d at 1637-38; In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *13 (TTAB 2019).

The TTAB found the evidence of record, including the dictionary definition of “light up,” Applicant's website, as well as numerous third-party websites, established that “light up” (including the intentionally misspelled “LYTE UP”) immediately and directly informs the public that the goods being offered for sale are clothing goods or costumes that illuminate or glow in the dark—that is, they “light up.”

Accordingly, the TTAB held that LYTE UP CLOTHING was generic.

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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