One of the fascinating aspects of trade mark law is its penchant for seemingly internal
contradictions. The most notable is, of course, the distinctive mark that is so successful that it becomes generic and thereby loses all distinctive power. Another example is that wonderful ground for rejection-- that the mark is "geographically misdescriptive". If you manage to show that the mark is not misdescriptive, you are then faced with the examiner's claim that the mark is still unfit for registration because it is geographically descriptive. The examiner gets you both coming and going.
This Kat would like to propose another seeming contradiction--the branding of a generic name. As a matter of black-letter law, a generic name is by definition bereft of all distinctive power as an indicator of source. As such, a generic mark cannot serve as a protectable trademark. But there are circumstances in which a generic name can be the subject of a full-scale branding campaign and later enjoy goodwill as a brand of its own. There is no better example than the U.S.-based campaign for the milk industry based on the tag line "Got Milk?", accompanied by the image of well-recognized face adorned with a milk-based white moustache.
The problem for the milk industry is that milk consumption continues to decline. Moreover, there is no brand awareness for white milk: there is no COCA COLA equivalent brand for milk. Within a given category of milk (or even a sub-category, such as whole milk or skim milk), one brand is pretty much like any other. Hand over heart, how many of you choose your carton of white milk based on its brand? Purchase is based primarily on price and access to the carton in the grocery cooler. Brands for white milk have little power to draw custom to their specific product.
Also, the nutritional biology and chemistry of milk have conspired against it. We are told that evolutionary developments that took place less than 10,000 years ago brought about a change in our digestive make-up and have enabled us to be lactose tolerant with respect to milk (lactose being a sugar contained in milk). But the results of that evolutionary process are uneven -- as is described on an educational site entitled "Understanding Evolution", produced by the University of California here:
"In the US and many other countries, we've certainly "got milk," but not everyone can enjoy it. For around 10% of Americans, 10% of Africa's Tutsi tribe, 50% of Spanish and French people, and 99% of Chinese, a tall cold glass of milk means an upset stomach and other unpleasant digestive side effects. In fact, most adults in the world are lactose intolerant and cannot digest lactose, the primary sugar in milk. And yet, regardless of our ancestry, most of us began our lives happily drinking milk from a bottle or breast — so what happened in the intervening time? Why do so many babies enjoy lactose and so many adults avoid it? The answer is an evolutionary story that takes us from the milkmaids of the Alps to the Maasai herdsmen of Africa."