USPTO Lifts Burden of Evidence for Generic Marks

The United States Patent and Trademark Office (USPTO) issued new guidance stating that examining attorneys will no longer need to present “clear evidence” when refusing generic trademark applications in inter partes proceedings at the Trademark Trial and Appeal Board (TTAB). The USPTO will now require attorneys to provide “sufficient evidence” to establish a prima facie case of genericness. World IP Review interviewed Finnegan attorney Dan Stringer to discuss the updated standards. 

Dan explained that trademark applicants should expect more genericness refusals because the USPTO will be issuing refusals rather than third parties. He stated, “This should ultimately result in a trademark register that is ‘cleaner’, which will benefit everyone in the marketplace.”

Experts warn that the new guidance will bring more workload to examiners, but Dan suggested that loosening of the genericness standard may result in decreased trademark filings due to fear of refusal. He continued, “It may also increase the costs of developing, searching, and selecting new marks, particularly for emerging goods and services.”

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