US Patent and Trademark Office wrote:Generic terms are by definition incapable of indicating a particular source of the services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.
Generic Term Need Not be a Noun
A term need not be a noun to be generic. Miller Brewing Co. v G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978) (LITE held generic for beer); In re Reckitt & Coleman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS held generic for soil and stain removers for use on permanent press products); TMEP §1209.01(c)(ii).
Applicant argues earnestly that the term “Mormon” is a not a religious service, but the source of religious services, thus performing the classic job of a service mark, which is to indicate the source of the applicant’s goods or services.
This argument is flat-out contrary to the above axiom, bolstered by case law, that the generic term need not be a noun. There are many varied types of churches, in the sense of a church being a facility erected for the primary purpose of providing a place for assembly and gathering for worship, for providing religious worship services. Mormonism is a specific religion. The Mormon Church, also known as “The Mormon Church of Jesus Christ of Latter-day Saints” and the “Church of Jesus Christ of Latter-day Saints” is a Church in the sense of “A specified Christian denomination.
The relevant public reading the term “Mormon” immediately knows that the article or news release or whatever is before them is about the Mormon religion, one of the Christian religions. The term “Mormon” is not a source of religious services, it is the generic term for a particular religion. One expects religions to provide religious services, it is what God or the founders had in mind for them. One expects to find a religious service in a house of religion. In a Mormon house of worship, one expects to find a Mormon Church religious service. The term “Mormon” locates the type of church, the religious affiliation of a worshipper at that church, indicates a certain organized philosophy and belief system. The term “Mormon” is an adjective directly indicating a religious group whose major reason for coming together is to worship publicly in a prescribed way.
Office Action, 11/01/2005