The United States Patent and Trademark Office recently issued an Examination Guide 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.
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.