In new examination standards released in May this year, titled “Clarification of Examination Evidentiary Standard for Marks Refused as Generic”,the United States Patent and Trademark Office (USPTO) has amended the evidence requirements for generic trademark refusal in inter partes proceedings at the Trademark Trial and Appeal Board (TTAB).
According to the USPTO, this update lifts the burden from examining attorneys who wish to refuse generic trademark applications to provide “clear evidence”.
Instead, to establish a prima facie case that an applied-for mark is generic, there must now be “sufficient evidence to support a reasonable predicate (ie, reasonable basis) for the refusal under the applicable legal standard”.
The USPTO added: “The standard for an examining attorney to establish a prima facie case of genericness is the same as for other substantive refusals.”
’More genericness refusals’
Daniel Stringer, staff attorney at Finnegan, told WIPR that applicants should expect to see more genericness refusals where appropriate because the USPTO will be issuing them rather than interested third parties.
“This should ultimately result in a trademark register that is ‘cleaner’, which will benefit everyone in the marketplace,” he says.
Previous USPTO guidance used “clear evidence”—the applicable evidentiary standard for more than 30 years—which led to confusion over whether the standard for a third party to remove a presumptively valid registered trademark from the register was lower than the standard for the USPTO to prevent the mark from being registered in the first place.
In an attempt to resolve the confusion, the USPTO will “no longer use the terminology ‘clear evidence’ in the Trademark Manual of Examining Procedure (TMEP) to refer to the examining attorney’s burden to support genericness refusals”.
“My concern over the new exam guide is less with the change in how genericness will be approached and more with the added burden on the USPTO.”
William Stroever, Cole Schotz
More work for examiners?
However, William Stroever, member and co-chair of the IP department at Cole Schotz, warns that the new guide may result in added work for examiners.
“My concern over the new exam guide is less with the change in how genericness will be approached and more with the added burden on the USPTO,” says Stroever.
“Examiners are already digging through record backlogs, and the change in the exam guidelines will lead to more genericness refusals, more office action responses, more requests for reconsideration, and more appeals.
“Hopefully this increase in workload will not overload examiners who are already facing mounting piles of applications.”
Stringer adds that the loosening of the genericness standard may lead to applicants being warier of filing applications that may be refused on genericness grounds, thus potentially decreasing filings.
“It may also increase the costs of developing, searching, and selecting new marks, particularly for emerging goods and services,” he says.
The USPTO, at least, gave assurances that under the new guidance, an examining attorney “does not bear a greater burden in supporting a position that an applied-for mark is generic beyond the evidentiary showing required by the relevant legal test”.
The nature or types of evidence needed to demonstrate genericness will not change under the revised guidelines. The USPTO confirmed that examining attorneys will still consider the applied-for term’s primary significance to consumers.
Similarly, the sources of relevant evidence will still include “dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning”.
“As genericness refusals increase from the USPTO, examiners may look to applicants’ own websites for evidence that an applicant has been using a term generically.”
TM owners ‘'at risk’' from their own websites
Meanwhile, Stroever thinks it will be “interesting to see if and how the new examination standard is applied at the TTAB, both in appeals of refusals and inter partes proceedings”.
He adds that a side effect of the new exam guide may be the role applicants’ websites and marketing materials may could play in genericness refusals.
“In the past, examining attorneys gathering evidence to support descriptiveness refusals would look to dictionary definitions to show that a trademark or portion of a trademark was merely descriptive.
“Evidence of a trademark owner’s own generic use of a term has always been strong evidence of genericness.
“As genericness refusals increase from the USPTO, examiners may look to applicants’ own websites for evidence that an applicant has been using a term generically.
“Attorneys will need to make sure they are counselling applicants on proper trademark use not just for traditional trademark implementation, but so that they are not creating evidence that will torpedo their pending trademark applications.”
Main image: Shutterstock / Andrey_Popov
