Why Generic Terms Can’t Be Trademarked

Understanding How Trademark Law Affects Business Names in New York

When you’re starting a business in New York, your name matters more than you might think. It’s how customers find you. It’s how you protect your brand. Choosing the wrong name could put you at risk. Especially if it’s too generic. Many businesses don’t realize that using a generic term means giving up the chance to claim trademark rights. That mistake can cost you down the line.

At Horn Wright, LLP, we help New York businesses stay protected from the beginning. Our intellectual property attorneys work with local entrepreneurs, small business owners, and startups across industries to secure trademarks that actually hold up. If you’re trying to build something lasting, we’ll help you do it on the right legal footing.

Start with the Basics: What Makes a Term Generic?

Generic terms describe the type of goods or services offered, but they don’t point to a specific business. Words like “coffee shop,” “hardware store,” or “auto repair” simply tell people what you sell, not who you are. Because they lack distinctiveness, the U.S. Patent and Trademark Office (USPTO) won’t approve trademarks based on generic words. Trademark protection only applies to names that clearly set your business apart from others.

Across New York, from Buffalo to Albany to Queens, business owners often try to trademark names like “New York Roofing” or “Bagel Delivery” in hopes of claiming local identity. But the law treats those phrases as open to all. When a name describes a product or service instead of its source, it’s considered generic. Without the ability to register it, you lose the right to keep others from using it too.

Why Trademark Law Blocks Generic Terms in New York

The purpose of trademark law is to prevent confusion. It protects consumers just as much as it protects business owners. When everyone uses the same basic words, nobody can tell one brand from another. That’s a problem in any city, but especially here in New York State.

With such a dense concentration of businesses, especially in places like Brooklyn, Syracuse, and Westchester, brand overlap becomes a legal and practical headache. If two companies both call themselves something like “Capital Region Cleaning,” neither one can claim an exclusive right. That leaves both vulnerable.

Courts across the Second Circuit, which includes New York, consistently deny protection to marks that describe what a business is rather than who it is. The USPTO follows the same rule. If the name directly identifies the category of goods or services, it’s considered generic. That makes it legally unprotectable.

Why Generic Trademark Applications Often Fail in New York

Many businesses in New York try to trademark names that describe what they do instead of who they are. That approach feels intuitive, but generic wording usually doesn’t meet trademark standards. When a name simply tells customers what’s being sold, it lacks the distinctiveness required for protection.

To succeed, a business needs a strong trademark, one that clearly identifies the source of goods or services. Generic terms don’t do that. They stay available for anyone to use, leaving your brand vulnerable and unprotected in the marketplace.

How the USPTO Evaluates Generic Terms in Applications

When a New York business applies for a trademark, the USPTO doesn’t just look at the words on their own. They ask a key question: What do consumers understand this term to mean?

If the public sees the term as the name of a category of products or services, it gets flagged as generic. Examiners often check dictionary definitions, news articles, and market usage. They want to know whether people use the term to describe a type of product or a brand.

Here’s what that process usually involves:

• Review of the mark’s wording and structure
• Comparison against competitors in the same industry
• Consumer perception testing, if disputed
• References to existing uses across New York (or nationally)

A term like “Ice Cream Truck” is a good example of what the USPTO considers generic. It refers broadly to a category of service, not a specific provider. Because it doesn’t indicate a unique source, it falls short of what’s needed to protect your trademark under federal standards.

The Fine Line Between Descriptive and Generic

Descriptive terms come close to generic ones but fall into a different legal category. They describe a quality, feature, or characteristic of the goods or services. Think of names like “Empire Green Lawn Care” or “Hudson Valley Mobile Detail.” These phrases suggest what the business does but might still identify a source, especially over time.

Descriptive marks can gain protection if they acquire what’s known as “secondary meaning.” That happens when consumers begin to associate a name with a particular provider, not just a type of service. But generic terms can never cross that line. No matter how long you use a name like “Pizza Delivery,” you can’t make it yours alone.

In areas like Long Island or the Capital Region, where local pride runs deep, businesses often lean on geographic references. That can help or hurt. If “Hudson Valley Painters” becomes a known brand, it might earn protection as a descriptive mark. But if the term simply tells people what the business is, it won’t qualify.

Risks of Building a Brand Around a Generic Name in New York

Using a generic name feels simple at first. It’s clear, direct, and easy for customers to understand. But that clarity can cost you later. Especially in a state like New York, where competition runs high and reputations matter.

Here’s what can happen:

• You won’t be able to register the trademark
• Competitors can use the same or similar name
• You could face legal disputes you can’t win
• Brand confusion may undercut your growth
• Marketing efforts lose impact without exclusivity

Once you’ve spent months building a brand around a generic term, changing course becomes difficult and expensive. That’s why we urge New York business owners to think strategically right from the start.

If you’re operating in areas like Ithaca, White Plains, or Staten Island, where word-of-mouth plays a big role, protecting your identity isn’t optional. It’s essential.

What New York Businesses Should Do Instead

You don’t need a flashy name. You just need one that stands apart. And that can be protected.

Think about what makes your business unique. Is it the founder’s name? A creative twist? A strong local tie? These are the kinds of elements that help turn an ordinary name into a protectable trademark.

Try these strategies:

• Combine distinct words with geographic identifiers (e.g., “Harbor & Pine Books”)
• Use invented or coined terms
• Reference a cultural or historical aspect of your town
• Add personal names to anchor the brand

Before you file anything, do a clearance search. Look up registered trademarks on the USPTO site. Check New York State records too. Just because something isn’t registered doesn’t mean it’s safe to use.

Working with a trademark attorney can save time, money, and stress. They can help you craft a name that not only captures your mission but keeps you protected for years to come.

Protect Your Brand with a Strong, Distinctive Name

Generic terms won’t give your business the legal protection it needs in New York or anywhere else. If you’re building something worth protecting, start with a name that actually qualifies for trademark status. A name that sets you apart. 

At Horn Wright, LLP, we help businesses throughout New York State secure trademarks they can rely on. You can contact us today to start with a stronger foundation.