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The United States Patent and Trademark Office recently issued an <a href="https://www.uspto.gov/subscription-center/2022/new-guide-clarifying-examination-evidentiary-standard-marks-refused" target="_blank" rel="noreferrer noopener">Examination Guide</a> clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima facie case of genericness, the examining attorney must provide “sufficient evidence” to support a reasonable predicate for the refusal.

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Prior to this clarification, the Trademark Trial and Appeal Board and the Federal Circuit required a higher showing of “clear and convincing evidence” of genericness, which conflicted with the reasonable basis standard required of other substantive refusals. Accordingly, adopting a reasonable basis standard for refusing trademark applications based on genericness ensures consistency when evaluating substantive issues. It also means there will likely be more refusals on the basis that a term is generic, so applicants need to be advised to consider the inherent distinctiveness of their proposed marks even more closely than before.

New Lower Trademark Examination Evidentiary Standard for Genericness Refusals at the USPTO