At the end of last month, the United States Patent and Trademark Office (“USPTO”) released a guide clarifying how they were approaching the refusals of applied-for marks that could be generic. In the past, examining attorneys at the USPTO used a heightened “clear evidence” standard when refusing an applied-for mark for genericness, which resulted in rare genericness refusals. The USPTO has clarified that now when examining attorneys refuse an applied-for trademark for genericness, they need to show only a reasonable basis for the refusal, after which the burden shifts to the applicant to argue why the applied-for mark should be eligible for registration on the Principal or Supplemental Register.
But what does this mean for trademark applicants at the USPTO? And is there any trademark applicants should be aware of as they make trademark filing decisions?
- The Ultimate Genericness Standard Remains the Same.
First and foremost, applicants should understand that the ultimate standard for genericness remains the same. Generic terms are still ineligible for federal registration. The USPTO examining attorneys will consider the same evidence of genericness in determining the primary significance of the applied-for mark to consumers (dictionaries, usage by consumers and competitors, consumer surveys, etc.). So what changed?
The change implemented by this USPTO examination guide is intended to make it easier for examining attorneys to refuse applied-for marks on the basis of genericness. Before this guide, examining attorneys were expected to meet a heightened standard before refusing a mark for genericness, which meant an increased burden on the examining attorneys and fewer refusals. By contrast, third parties challenging an application or registration in court or at the Trademark Trial and Appeal Board needed to meet only a “preponderance of the evidence” standard. This guide harmonizes those two standards and makes clear that the standard for examining attorneys is no different than that of a third party.
- You Should Expect More Genericness Refusals.
The first place applicants will see this change will be in an increased number of genericness refusals. With the new, “lower” standard, examining attorneys will be more likely to issue genericness refusals where in the past they may have only refused an applied-for mark as merely descriptive (and therefore still potentially eligible for registration on the Supplemental Register). If you are filing an application on a trademark on or close to that conceptual borderline, you should not be surprised to receive a genericness refusal, which means a more difficult path to registration.
- You Should Discuss the Strength of Your Proposed Marks with an Attorney.
It’s always a good idea for trademark applicants to discuss the conceptual strength of their new trademarks with their attorneys. Strong trademark rights start with strong trademarks. The recent USPTO examination guide highlights that this type of counseling is more important than ever. Trademarks exist on a conceptual spectrum from the strongest arbitrary and fanciful marks on one end, to weaker descriptive marks and unprotectable generic terms on the other end. Your attorney can help you spot potential issues with the conceptual strength of your marks before you spend the time and money at the USPTO and in your marketing efforts. Generic terms are not registrable at the USPTO and do not create protectable trademark rights that can be enforced against competitors or would-be infringers. The best time to spot these problems is before you adopt a trademark, and that means having a discussion with your attorney about how to strengthen a proposed mark.
- Be Careful with Your Own Usage of Your Marks.
The other important conversation to have with your attorney is about the proper usage of your own trademarks. One of the favorite types of genericness evidence used by challengers of trademarks is evidence that the trademark owner has been using their own mark generically. How can a trademark applicant dispute that a proposed mark is generic when they themselves have been using the proposed mark in a generic manner? Examining attorneys at the USPTO already check applicants’ websites as part of their trademark application reviews, and they will no doubt pounce on evidence that an applicant has been using their applied-for mark generically. Make sure that you understand the proper way to use your trademarks both to strengthen your trademark rights and to avoid genericness challenges. If you have questions: ask!
- The End Result Should be a Cleaner Marketplace.
In the end, the result of this examination guide and the revised standard of review for examining attorneys should be a “cleaner” marketplace. It was not uncommon in the past to see potential trademark plaintiffs asserting trademark registrations for terms that were at best questionably generic. Federal trademark registration on the Principal Register creates a presumption of validity, which meant that in the past the recipients of these challenges faced the burden of showing these asserted terms were generic. The revised standard of review for examining attorneys will weed out many of these generic terms and prevent their registration, which means fewer trademark plaintiffs asserting rights in generic terms. This means lower costs and fewer challenges faced by companies in the marketplace, which can only be a good thing!
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The clarification issued by the USPTO should help shift some of the burden of challenging potentially generic terms from companies to the USPTO. But we also understand that evidentiary standards and the conceptual strength of trademarks can be confusing. If you have questions about this new examination guide or what it means for your business, reach out and ask!