The trademark lawyers sternly warn us: “Don’t let your trademark become generic!” They tell us horror stories: ASPIRIN was once a trademark, but became generic from improper use. Same thing for ESCALATOR and INTERNET. Some trademark owners implement aggressive marketing campaigns to prevent this terrible fate: “It’s KLEENEX® brand facial tissue,” or “VELCRO® brand hook-and-loop fasteners,” or “XEROX® brand copiers.” We even have a clever name for lost trademarks. “Genericide” is when a trademark dies, becoming generic due to rampant and improper use. But is the reverse possible? Can a generic term become registered like a trademark? Though it may sound like trademark mythology, it is possible. So pour a shot of your favorite south-of-the-border spirits, and let’s look at how “tequila” became “TEQUILA®.”
For this tale, we need to start at the beginning. What is tequila? According to U.S. liquor regulations, “’Tequila’ is an alcoholic distillate from a fermented mash derived principally from the Agave Tequilana Weber (‘blue’ variety) . . . manufactured in Mexico in compliance with the laws of Mexico . . . ” 27 CFR 5.22(g). For years, the U.S. Patent and Trademark Office considered “tequila” a generic term in describing such spirits. However, Consejo Regulador del Tequila, A.C. (aka “CRT”) the entity charged with assuring that all things labeled “tequila” comply with the laws of Mexico, decided it could no longer tolerate its precious spirits being called generic. The solution? Certification mark status.
A certification mark is like a trademark, but instead of using the mark itself, the owner controls third-party use by setting standards for such use. Common certification marks include ENERGY STAR® for energy efficient consumer products and WOOLMARK® for goods made of 100 percent wool. So, CRT started TEQUILA on the path to certification mark status, and it proved a treacherous path. After a five-year battle with the Trademark Office over whether TEQUILA is generic or not, the application was eventually approved for publication in 2008. That began a second round of battles when competitor Luxco, Inc. (the owner of the EVERCLEAR brand) opposed registration, again arguing that TEQUILA is generic. But CRT persevered and eventually prevailed. In a 75-page opinion issued last year, the Trademark Trial and Appeal Board granted TEQUILA certification mark status. That means “tequila” should no longer be used as a generic term. And for CRT, that means the Trademark Office now takes an active role in policing “TEQUILA” by prohibiting use of the term in the goods descriptions of trademark applications.
The result begs two questions. First, what do trademark attorneys call this miraculous transition from generic term to trademark-like status? The opposite is “genericide,” so perhaps “generi-genesis” – a new beginning for what was common. Second, what is the generic name for spirits certified as TEQUILA®? “Distilled blue agave liquor” will have to do. Let’s hope your TEQUILA® eases across your palate more gently than the generic name stumbles off your tongue. ¡Salud!