June 24, 2022
Bloomberg Law
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."
Read "New Guidance Will Boost ‘Generic’ Trademark Denials, Lawyers Say"
Media Mention
Women in Business Law Americas Awards 2024: Three Finnegan Attorneys Shortlisted
April 7, 2024
Award/Ranking
Managing IP Americas Awards 2024: Finnegan Shortlisted for Nine Awards, Including Firm of the Year
March 12, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.