Not every use of a word that happens to be someone else's trademark is infringement — and not every trademark is entitled to the same scope of protection. Two related doctrines do a lot of the work in trademark disputes that never should have escalated in the first place: genericness and fair use. If you've read our posts on likelihood of confusion, dilution, and responding to a cease-and-desist letter, these are the defenses that letter is often hoping you won't know about.
The Spectrum of Distinctiveness
Not all trademarks are created equal, and the amount of protection a mark receives depends heavily on where it falls on what's known as the spectrum of distinctiveness, established in the foundational case Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). Marks fall into five categories, from weakest to strongest:
- Generic — the common name for the product or service itself (e.g., "bicycle" for bicycles). Generic terms receive no trademark protection at all, no matter how long or how exclusively they've been used, because protecting them would let one company monopolize the only word customers have for an entire category of goods.
- Descriptive — directly describes a quality, feature, or characteristic of the goods (e.g., "Cold and Creamy" for ice cream). Descriptive marks are protectable, but only once they've acquired "secondary meaning" — consumer recognition that the term identifies one particular source, not just a description.
- Suggestive — requires some imagination to connect the mark to the product (e.g., "Netflix" for streaming). Suggestive marks are inherently protectable without proof of secondary meaning.
- Arbitrary — a real word applied in a context that has nothing to do with its ordinary meaning (e.g., "Apple" for computers). Inherently protectable and strong.
- Fanciful — an invented word with no meaning outside its use as a mark (e.g., "Kodak," "Xerox"). The strongest category.
Genericness: The Defense (and the Cancellation Ground) That Wins Outright
If a term is generic for the goods or services at issue, it simply cannot function as a trademark for those goods — registration can be refused, an existing registration can be cancelled, and use of the term by a competitor is not infringement, no matter how long the original claimant has used it or how much money they've spent building brand recognition around it. This is true even for marks that started out strong and became victims of their own success — a phenomenon sometimes called "genericide." Historic examples include "aspirin," "escalator," "thermos," and "cellophane," all of which were once protectable trademarks that courts eventually found had become the generic name for the product itself in the minds of consumers.
Genericness determinations aren't always intuitive, especially in the internet era. In United States Patent and Trademark Office v. Booking.com B.V., 140 S. Ct. 2298 (2020), the Supreme Court rejected the USPTO's position that adding ".com" to a generic term (like "booking") is automatically, categorically generic. The Court held that whether a "generic.com" term is generic depends on what it actually means to consumers — if the public perceives "Booking.com" as identifying one particular company rather than the class of online booking services generally, it can be registered. This case matters beyond domain names: it reinforced that genericness is fundamentally a question of consumer perception, not a mechanical linguistic rule, and that even combinations of otherwise-unprotectable elements can acquire source-identifying meaning.
The strategic point for a business facing an infringement claim: if the term being asserted against you is the generic name (or has become the generic name) for the category of goods or services itself, the claimant may have no enforceable trademark rights over that term at all — regardless of registration.
Classic (Descriptive) Fair Use
Separate from genericness, the Lanham Act provides an explicit statutory defense at 15 U.S.C. § 1115(b)(4): a defendant may use a term that is descriptive of, and used fairly and in good faith only to describe, its own goods or services — even if that same term is someone else's registered trademark.
The key case here is KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). The parties both used the term "microcolor" in connection with permanent cosmetics; Lasting Impression held an incontestable federal registration for the term. The Supreme Court held that a defendant asserting classic fair use does not have to prove there's no likelihood of confusion — the burden of proving confusion stays on the plaintiff throughout. In other words, some degree of consumer confusion is not automatically fatal to a fair use defense; the statute permits use of a term in its ordinary, descriptive sense even where the trademark owner has established rights in that same term as a source-identifier.
The practical significance: if you're using a word to describe your own product or service (its qualities, ingredients, geographic origin, or the like) rather than to identify its source or brand it, you may be within your rights to use that word even if it overlaps with someone else's registered mark — provided the use is genuinely descriptive and made in good faith, not as an attempt to trade on the mark's brand recognition.
Nominative Fair Use
A related but distinct doctrine covers situations where you need to reference someone else's actual trademark to talk about their actual goods or services — not to describe your own product, but to identify theirs. The leading case is New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), which involved newspapers running call-in polls asking readers to vote for their favorite New Kids on the Block band member — necessarily using the band's trademarked name to do so.
The Ninth Circuit held that nominative use of a mark is non-infringing where three conditions are met: (1) the product or service in question is not readily identifiable without use of the mark; (2) only so much of the mark is used as is reasonably necessary to identify it; and (3) the use does nothing to suggest sponsorship or endorsement by the mark holder. Comparative advertising, repair or resale services that reference the original manufacturer's brand ("compatible with [Brand] printers"), commentary, and reviews are common contexts where nominative fair use applies.
How These Defenses Interact With Confusion and Dilution
It's worth connecting these back to the earlier posts in this series. A genericness defense doesn't just weaken a confusion claim — done correctly, it eliminates the claim entirely, because there's no protectable mark to infringe in the first place. Classic and nominative fair use, by contrast, are affirmative defenses that can apply even where the plaintiff's mark is unquestionably valid and strong; they focus on whether your use is the kind of use trademark law is meant to prevent.
On the dilution side, recall from our earlier post that the federal dilution statute, 15 U.S.C. § 1125(c)(3), contains its own separate fair-use exclusion, covering use in connection with parody, criticism, commentary, comparative advertising, and noncommercial use. That exclusion is narrower than the classic and nominative fair use doctrines discussed here — it's worth evaluating separately if a letter asserts both infringement and dilution.
Takeaways
- Generic terms get no trademark protection at all — genericness is a complete defense, and even famous marks that started out strong can lose protection through "genericide."
- The Booking.com decision confirms genericness turns on actual consumer perception, not a mechanical rule about generic words plus a suffix.
- Classic (descriptive) fair use under 15 U.S.C. § 1115(b)(4) lets you use a term in its ordinary descriptive sense to describe your own goods, and the plaintiff — not you — bears the burden of proving confusion.
- Nominative fair use lets you reference someone else's actual mark to identify their actual goods or services, subject to the three-part New Kids on the Block test.
- These defenses are worth evaluating early — before you assume a cease-and-desist letter's claim is as strong as it's presented to be.
This post is provided for general educational purposes and does not constitute legal advice. It does not create an attorney-client relationship. Whether genericness or a fair use defense applies is highly fact-specific and depends on how a term is actually used and understood by consumers. Contact our office to evaluate your specific situation.