Generic genericness

What is “generic genericness”?  I just coined the phrase.  It refers, I maintain, to a genericness defense against infringement made by the junior user of a trademark where the English word on which the defense is premised doesn’t, well, exist, but the defendant maintains that the mark is so generic-y — i.e., so much like other words that really do exist — that it should be treated as generic anyway.

It is an intriguing argument, generically speaking.  But, it seems, a losing one, at least in this UDRP case reported by Gerald Levine:

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, D2013-0268 (WIPO April 17, 2013). In this case, the domain name, is identical to the Complainant’s trademark.

Could it be generic? Yeah, maybe, possibly.  Depends, perhaps, on how many drinks you’ve had.  Either way, however, it’s a problem making this argument after someone else has already coined the term ENCAPTURE and is using it as a trademark:

Respondent argued that “encapture” is a common word. While “en” is a familiar prefix in English, “enthrone”, “enrapture,” “entangle” etc. it does not work with “capture.” “Capture” is a common word, but not “encapture.” What would the word mean? To Respondent the prefix is a substitute for “to ”, but that would violate standard usage. “En” may mean “to put on” (“enthrone”), indicate intensification of an emotional state (“enrapture”), or cause something or someone to become more caught up in (“entangle”). The Panel notes that “Respondent has alleged that the term ENCAPTURE is generic in the sense of describing ‘to capture’. . . .

In other words, Complainant has created a non-word that looks as though it could be a word because it appears to have been properly formed, but in fact its validity to English speakers (as with the fruit examples) depends solely on its use in the marketplace. It works only on the symbolic, not the grammatical level. The Complainant established that the manner in which Respondent was (or had been) using the domain name disqualified it as having a right or legitimate interest in it. While that alone does not establish abusive registration it is certainly consequential in supporting a conclusion that Respondent chose the domain name to take advantage of the trademark.

You might say he tried to “encapture” the goodwill of the markholder, which the UDRP, in its trademark-like way, forbids.  You could say it — but you wouldn’t be talking English.  There’s no such thing, see, as generic genericness.

Originally posted 2013-06-18 10:42:49. Republished by Blog Post Promoter