Can a Generic Term be Trademarked?

Every trademark attorney knows that a generic term cannot be trademarked. However, using a small exception to that rule, Best Buy registered a federal trademark in “best buy,” even though a court had previously ruled that “best buy” was generic. For a great summary of the situation, read Best Buy, Resurrected From the Trademark Graveyard?

The doctrine permitting a generic term to be deemed no loner generic is called the “Singer doctrine,” named after the Singer sewing machines. Best Buy’s trademark application explains:

The ability of a trademark owner to recapture a term that has become generic is explicitly recognized in Singer Mfg. Co. v. Briley, 207 F.2d 519, 522, 99 U.S.P.Q. 303 (5th Cir. 1953). Singer began making sewing machines in the mid-nineteenth century. By 1896, however, the name SINGER had become a generic designation for a distinctive style of sewing machine. As a result of Singer’s continuous and exclusive use and advertising of the SINGER mark, by 1953, the Fifth Circuit held that the mark had been “recaptured” from the public domain.

Similarly, in the present case, Applicant first began using the mark in late 1983. Prior to that time, the predominant treatment of the mark by the PTO was as a descriptive rather than a generic term. This is supported by the many third party registrations of the term BEST BUY . . . .

Based on this argument and others in its trademark application, Best Buy obtained a federal trademark registration in the term “best buy.” If you want to read the full version of Best Buy’s successful argument, see page 47 of this 54 page PDF document: Best Buy’s Trademark Application on Minnesota Lawyer.

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