# TMEP § 1209.01(c)(ii): Terminology

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/TMEP_S1209.01(c)(ii)

## Section

- **Citation:** TMEP § 1209.01(c)(ii)
- **Heading:** Terminology
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO TMEP / Chapter 1200 - Substantive Examination of Applications / TMEP § 1209.01(c)(ii)

## Text

As specifically amended by the Trademark Law
Revision Act of 1988, §14 of the Trademark Act provides for the cancellation
of a registration of a mark at any time if the mark "becomes the generic
name for the goods or services, or a portion thereof, for which it is
registered . . . ."
15
U.S.C. §1064(3)
.  Previously, that provision had
pertained to a mark that "becomes the common descriptive name of an article
or substance . . . ." Cases previously distinguished between generic names
and "apt or common descriptive names," which referred to matter that, while
not characterized as "generic," had become so associated with the product
that it was recognized in the applicable trade as another name for the
product, serving as a term of art for all goods of that description offered
by different manufacturers rather than identifying the goods of any one
producer.
See Questor Corp. v. Dan
Robbins & Assocs., Inc.,
199 USPQ
358, 364 (TTAB1978) ,
aff’d
, 599 F.2d 1009, 202 USPQ 100
(C.C.P.A. 1979). In addition, the Trademark Law Revision Act of 1988 amended
§15 of the Trademark Act to adopt the term "generic name" to refer to
generic designations.
15
U.S.C. §1065(4)
.  In view of the amendment of §§14
and 15, a distinction between "generic" names and "apt or common
descriptive" names is inappropriate. Rather, the terminology of the Act must
be consistently used, e.g., in refusals to register matter that is a generic
name for the goods or services, or a portion thereof.
See
In re K-T Zoe Furniture Inc.
, 16 F.3d 390, 29 USPQ2d
1787 (Fed. Cir. 1994).
Similarly, cases have distinguished between
"generic" terms and terms that were deemed "so highly descriptive as to be
incapable of exclusive appropriation as a trademark."
See In re Harcourt Brace
Jovanovich, Inc.,
222 USPQ
820 (TTAB1984) (LAW & BUSINESS held so highly descriptive as to be
incapable of distinguishing applicant’s services of arranging and conducting
seminars in the field of business law);
In re Indus. Rels. Couns.,
Inc
ween
"generic" terms and terms that were deemed "so highly descriptive as to be
incapable of exclusive appropriation as a trademark."
See In re Harcourt Brace
Jovanovich, Inc.,
222 USPQ
820 (TTAB1984) (LAW & BUSINESS held so highly descriptive as to be
incapable of distinguishing applicant’s services of arranging and conducting
seminars in the field of business law);
In re Indus. Rels. Couns.,
Inc.
, 224 USPQ 309 (TTAB 1984) (INDUSTRIAL RELATIONS
COUNSELORS, INC. held an apt name or so highly descriptive of educational
services in the industrial relations field that it is incapable of exclusive
appropriation and registration, notwithstanding
de facto
source recognition capacity). Regarding the terminology used in refusing
registration of such matter, the Trademark Trial and Appeal Board noted as
follows in
In re Women’s Publishing Co.
, 23 USPQ2d 1876,
1877 n.2 (TTAB 1992):
The Examining Attorney’s refusal that
applicant’s mark is "so highly descriptive that it is incapable of
acting as a trademark" is not technically a statutory ground of refusal.
Where an applicant seeks registration on the Principal Register, the
Examining Attorney may refuse registration . . . on the basis that the
mark sought to be registered is generic.
In essence, the Board was merely emphasizing
the need to use precise statutory language in stating grounds for refusal.
While the decision does not explicitly bar the use of the terminology "so
highly descriptive that it is incapable of acting as a trademark" under all
circumstances, the case illustrates that the use of this terminology may
lead to confusion and should be avoided. It is particularly important in
this context to use the precise statutory language to avoid doctrinal
confusion.
See generally
Linda McLeod,
The
Status of so Highly Descriptive & Acquired
Distinctiveness
, 82 Trademark Rep. 607 (1992). Therefore,
examining attorneys must not state that a mark is "so highly descriptive
that it is incapable of acting as a trademark" in issuing refusals
d be avoided. It is particularly important in
this context to use the precise statutory language to avoid doctrinal
confusion.
See generally
Linda McLeod,
The
Status of so Highly Descriptive & Acquired
Distinctiveness
, 82 Trademark Rep. 607 (1992). Therefore,
examining attorneys must not state that a mark is "so highly descriptive
that it is incapable of acting as a trademark" in issuing refusals. Rather,
in view of the amendments of the Trademark Act noted above, the terminology
"generic name for the goods or services" must be used in appropriate
refusals, and use of the terminology "so highly descriptive" must be
discontinued when referring to incapable matter.
This does not mean that designations that
might formerly have been categorized as "so highly descriptive" should not
be regarded as incapable. The Court of Appeals for the Federal Circuit has
specifically stated that "a phrase or slogan can be so highly laudatory and
descriptive as to be incapable of acquiring distinctiveness as a trademark."
In re Boston Beer Co. L.P.
, 198 F.3d 1370, 1373, 53
USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and
ale held to be "so highly laudatory and descriptive of the qualities of
[applicant’s] product that the slogan does not and could not function as a
trademark to distinguish Boston Beer’s goods and serve as an indication of
origin").
The Court of Appeals for the Federal Circuit
has also stated that "[t]he critical issue in genericness cases is whether
members of the relevant public primarily use or understand the term sought
to be registered to refer to the genus of goods or services in question."
H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs,
Inc.
, 782 F.2d 987, 989–90, 228 USPQ 528, 530 (Fed. Cir.
1986). Also, note that it is entirely appropriate to consider whether a
particular designation is "highly descriptive" in evaluating registrability
under §2(f), or in similar circumstances
understand the term sought
to be registered to refer to the genus of goods or services in question."
H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs,
Inc.
, 782 F.2d 987, 989–90, 228 USPQ 528, 530 (Fed. Cir.
1986). Also, note that it is entirely appropriate to consider whether a
particular designation is "highly descriptive" in evaluating registrability
under §2(f), or in similar circumstances.
The expression "generic name for the goods or
services" is not limited to noun forms but also includes "generic
adjectives," that is, adjectives that refer to a genus, species, category,
or class of goods or services.
See
,
e.g.
,
In re Serial Podcast, LLC,
126 USPQ2d 1061, 1067 (TTAB 2018) (holding SERIAL generic for an ongoing
audio program featuring investigative reporting, interviews, and documentary
storytelling);
In re Mecca Grade Growers, LLC
, 125 USPQ2d
1950, 1959-60 (TTAB 2018) (holding MECHANICALLY FLOOR-MALTED generic for
malt for brewing and distilling and processing of agricultural grain);
Sheetz of Del., Inc. v. Doctor’s Assocs.
Inc.
, 108 USPQ2d 1341 (TTAB2013) (holding FOOTLONG generic for sandwiches, excluding hot
dogs);
In re Reckitt & Colman,
N. Am. Inc.
, 18 USPQ2d
1389 (TTAB1991) (holding PERMA PRESS generic for soil and stain removers for
use on permanent press products). Similarly, evidence showing that a term in
singular form is generic typically will suffice to show that the plural also
is generic.
See
In re Cordua Rests., Inc.,
823 F.3d 594, 603, 118 USPQ2d 1632,
1637 (Fed. Cir.2016) ("While each trademark must always be evaluated individually,
pluralization commonly does not alter the meaning of a mark.");
In
re Hotels.com, L.P.
, 573 F.3d 1300, 91 USPQ2d 1532, 1535 (Fed.
Cir. 2009) (dictionary and other evidence of meaning of "hotel" sufficed to
show that the plural form in HOTELS.COM was generic for the information and
reservation services at issue).

## Nearby sections

- [TMEP § 1201 Ownership of Mark](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.md)
- [TMEP § 1201.01 Claim of Ownership May Be Based on Use By Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.01.md)
- [TMEP § 1201.02(a) Identifying the Applicant Properly](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(a).md)
- [TMEP § 1201.02(c) Correcting Errors in How the Applicant Is Identified](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(c).md)
- [TMEP § 1201.02(d) Operating Divisions](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(d).md)
- [TMEP § 1201.02(e) Changes in Ownership After Application Is Filed](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(e).md)
- [TMEP § 1201.03(a) No Explanation of Use of Mark by Related Companies or Applicant’s Control Over Use of Mark by Related Companies Required](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(a).md)
- [TMEP § 1201.03(b) Wholly Owned Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(b).md)
- [TMEP § 1201.03(c) Common Stockholders, Directors, or Officers](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(c).md)
- [TMEP § 1201.03(e) License and Franchise Situations](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(e).md)
- [TMEP § 1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.04.md)
- [TMEP § 1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.05.md)
- [TMEP § 1201.06(a) Applicant Is Merely Distributor or Importer](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(a).md)
- [TMEP § 1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(b).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/TMEP_S1209.01(c)(ii). Check the current official text before relying on it. Not legal advice.