Can I get a generic name trademarked?

Question

This article (and my knowledge about trademarks) says Generic Names can't be trademarked. So my question is about the genericity of a name and the probability of getting it trademarked.

I own a generic domain name with .com since 2010 but lately found that another person is using the .co.uk tld of the same domain since 2016 for a website and doing business. I am planning to develop on my domain.

The domain name looks something like freecupcakes.com (just symbolic but not about cupcakes) and another party use the domain freecupcakes.co.uk.

my observations about the other person's business are.

1. They are using it since 2016
2. They don't have trademark registerd but a company with the same name in UK

So my questions are,.

1. Can I use proceed building the business with my domain which I own from 2010?
2. Can I register a company with the same name in another location not in UK/Europe?
3. Can this type of name be ever trademarked?
4. Can the other person using the same business name ever trademark this name?

Answer 1

1. Yes. You can build your business with that.

2. Yes. Also, a trademark is not a trade name and vice versa. This is a common mistake. A trademark is a brand affixed to some kind of product. A trade name is the name of a business. They are not the same things. The fact that you have a business with a particular trade name does not mean that you necessarily have a trademark in that name. You do not necessarily need to have a trademark in your trade name and often you can't because it is not a branding of your product.

3. Probably not. Certainly, you cannot get a principle register trademark for this. You could file a state trademark registration if you sell it in a U.S. second or perhaps a supplemental trademark registration, which don't necessarily give you legal rights, but do conclusively establish that you were using the mark in a particular place from a particular time which would discourage anyone else from trying to get a trademark of their own and oust you from using yours. Sometimes trademark examiners are lazy and let generic marks get registered even though they shouldn't.

4. Hard to say. They shouldn't be able to get a trademark in the U.S. on that basis, but the quality of trademark examination varies from country to country, and from examiner to examiner. Every once in a while I see an approved registration for a mark that should totally be disqualified and I shrug my shoulders and ask myself why I always clear a clear "no" from the PTO when I try to submit a mark like that and somehow the bozo who submitted that mark got it approved when it should be clearly ineligible for registration - for example, "Palisade Red" for red wine made in Palisade, Colorado. A lesser level of trademark registration such as a state trademark or a supplemental register mark discourages an otherwise lenient examiner from approving an already dubious mark and strengthen your case if you ever need to seek to have their mark cancelled.