This past month, the United States Patent and Trademark Office issued a new examination guide regarding the burden an examining attorney must meet to refuse registration of an applied-for mark based on genericness. Specifically, the USPTO clarified that, "for an examining attorney to establish a prima facie case that an applied-for mark is generic, for the purpose of refusing to register the mark on the Principal or Supplemental Register, there must be sufficient evidence to support a 'reasonable predicate' (i.e., reasonable basis) for finding the mark generic under the applicable legal standard." Notably, this new guidance eliminates the implied heightened "clear evidence" standard the USPTO examination guidance previously indicated an examining attorney must meet to establish a genericness case.
Importantly, according to the USPTO, this new guidance "does not change the nature or types of evidence needed to demonstrate genericness." An examining attorney must still consider a term's "primary significance to consumers" through various sources, including "dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning."
To learn more about USPTO's Examination Guide 1-22, "Clarification of Examination of Evidentiary Standard for Marks Refused as Generic," visit https://www.uspto.gov/sites/default/files/documents/TM-ExamGuide-1-22.pdf.
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