New Guidance Will Boost ‘Generic’ Trademark Denials, Lawyers Say

In May 2022, the U.S. Patent and Trademark Office (USPTO) issued new trademark examination guidance, which adjusted the refusal standard for generic marks from "clear evidence" to "sufficient evidence" that the mark is generic and cannot be protected. The USPTO's updated guidance is a reduced threshold that might lead to more denials of trademarks based on genericness. Bloomberg Law interviewed Finnegan attorney and former USPTO trademark examining attorney Dan Stringer to discuss the new USPTO guidance. 

Dan stated, "The evidentiary standard with respect to genericness as clear and convincing evidence has been around for over 30 years...So now to go ahead and change it to a reasonable predicate or a reasonable basis for refusing a proposed mark as generic is a pretty big change."

Prior to the updated guidance, trademark refusals based on genericness were uncommon due to attorneys finding ways to work around the threshold, like placing the mark on a secondary register. Dan added, "Ultimately, that might allow a generic term to have some trademark protection, which, as a generic term, it should not have any."

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