“Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001) (citations omitted); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1364 (Fed. Cir. 2009) (affirming that “mattress” is generic for online retail store services featuring mattresses).

Incapable of indicating a particular source of the goods or services, a generic term cannot be registered as a trademark. USPTO v. Booking.com B.V., 591 U.S. 549, 551 (2020) (“Booking.com”); In re Cordua Rests., Inc., 823 F.3d 594, 604 (Fed. Cir. 2016).

At the U.S. Patent and Trademark Office (“USPTO”), the genericness inquiry follows 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?” H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986); see also Princeton Vanguard, LLC v. Frito-Lay North Am., Inc., 786 F.3d 960, 966 (Fed. Cir. 2015) (affirming the two-part Marvin Ginn legal standard for genericness).

The Trademark Trial and Appeal Board ("TTAB") recently affirmed the genericness refusals of trademark applications for FREE PHOTOS and FREEPHOTOS covering printing services for printing photos. In re Inmate Photos, LLC, Ser. Nos. 97513508 and 97513513 (TTAB Jan. 15, 2026). 

The evidence of record included “website excerpts show[ing] numerous third parties using “free photos” to describe a perk or reward offered to consumers” (although some were for the apparently unitary phrase, “free photo books”). 

The TTAB also relied on Applicant's own statements and marketing to show that it uses “free photos” in a non source identifying manner to describe a perk of its services − printing photographs at no charge to the consumer. For example, Applicant's specimen uses “free photos” generically, asking “Who Doesn't Love Free Photos?” and explaining: “In addition to receiving a monthly allotment of free photo prints, you will earn free photos each time you purchase a personalized item from us.” 

Ordinary consumers of these services would therefore understand FREE PHOTOS and FREEPHOTOS to refer primarily to a key aspect of the services − namely, that the provider supplies free photo prints as a reward or promotional benefit. See, e.g., Cordua Rests., 823 F.3d at 604 (CHURRASCOS generic because it identifies a key aspect of a class of restaurants); 1800Mattress.com, 586 F.3d at 1361, 1364 (MATTRESS.COM generic because “mattress” identifies a key aspect of online retail store services in the field of mattresses, beds, and bedding); In re Hotels.com, L.P., 573 F.3d 1300, 1304, 1306 (Fed. Cir. 2009) (HOTELS.COM generic because “hotels” identifies a key aspect of “providing information for others about temporary lodging” and “making reservations and bookings for temporary lodging for others”); In re Sheetz of Del., Inc. v. Doctor's Assocs. Inc., No. 91192657, 2013 TTAB LEXIS 468, at *61-62 (finding “footlong” generic in connection with sandwiches); In re A La Vieille Russie Inc., No. 75609153, 2001 TTAB LEXIS 541, at *14 (RUSSIANART generic for “dealership services in the field of fine art, antiques, furniture and jewelry”); In re Log Cabin Homes Ltd., No. 74682845, 1999 TTAB LEXIS 425, at *6-10 (LOG CABIN HOMES generic for a particular type of building and therefore also generic for architectural design services directed to that type of building); In re Cent. Sprinkler Co., No. 74505190, 1998 TTAB LEXIS 386, at *13-14 (finding ATTIC generic for automatic sprinklers for fire protection in attics where ATTIC functions as a “generic adjective”).

The TTAB found that the proposed marks FREE PHOTOS and FREEPHOTOS would be understood by the relevant public primarily to refer to a key aspect of printing services such that the proposed marks are generic. 

John Welch at TTABlog commented that FREE PHOTOS seemed to be “merely descriptive to me.” 

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