USPTO Updates Policy (May 2022) For Generic Refusals
This past May 2022, the USPTO released Guide 1-22 entitled, Clarification of Examination of the Evidentiary Standard for Marks Refused as Generic. Prior to the change in policy, the Trademark Examining Attorneys at the USPTO used a heightened standard of review of “clear evidence” when refusing a proposed trademark application based on grounds of genericness. The Trademark Office has now clarified that the Examining Attorneys only need to show a “reasonable basis” (“reasonable predicate”) for finding the mark generic under the applicable standard.
Once the Examining Attorney can establish a reasonable basis to show the mark is generic, the burden shifts to the applicant to argue why the proposed mark should be eligible for registration. The USPTO has justified this change in policy by stating the previous standard for genericness refusals was inconsistent with both (1) the standard for third parties to challenge the registration of marks as generic and (2) the “reasonable predicate” meaning of “prima facie case” in the context of other refusals in examination. This update does not change the type of evidence required to prove genericness. Most important is the term’s primary significance to the consumer. This means the term would indicate that it is a type or class of goods or services rather than indicating it is a specific product or service provided by a particular entity.
The types of evidence would still include, dictionary definitions, usage by consumers and competitors, and any other source of evidence that would bear on how a consumer would perceive the term/mark. The USPTO has pointed out that Federal Circuit precedent adopted the “clear evidence” standard, but there is no statutory basis for applying a heightened standard. Of course, this does not change the fact that generic terms are not eligible for registration on the Principal or the Supplemental Register of the USPTO. What it signals is that applicants should expect to see more refusals based on genericness. Now applicants who may have received a merely descriptive refusal and allowed registration on the Supplemental Register, may receive a generic refusal as a result.
That being said, a recently issued decision of the Trademark Trial and Appeal Board (the “Board”) demonstrates to applicants that hopefully the pendulum has not swung too far on the side of generic refusals. See In re Mr. Bator LLC, Serial No. 88244852 (June 7, 2022) [not precedential], where the Board reversed a genericness refusal, giving the applicant the benefit of the doubt due to the mixed evidentiary record presented. The applicant was seeking to register the mark MULLET for bicycles on the Supplemental Register. The Examining Attorney held that MULLET for bicycles was generic, and applicant appealed the decision to the Trademark Trial and Appeal Board. As mentioned above, a generic term is one that is the common descriptive name for a class of goods or services. See our web page entitled, Merely Descriptive or Generic, for more on the two-part test used to analyze this issue: (1) what is the class of goods or services; and (2) does the relevant public understand the term to refer primarily to the class of goods or services.
It has been held that a term is generic if the relevant public understands the term to refer to part of the claimed class of goods or services or to a subcategory of a broader genus of goods or services, even if the public does not understand the term to refer to the broad class as a whole. See In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016), where it was held that CHURRASCOS is generic for a type of grilled meat and therefore also generic for restaurant services because it referred to a key aspect of those services. See also, In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985), holding that BUNDT is generic for ring cake mixes, i.e., the subcategory bundt cakes.
A different scenario existed in In re Mr. Bator LLC, here the evidence of record demonstrated a mixed use of the term MULLET as both the generic name of the goods and as a source indicator for such goods. Under these circumstances, the evidence did not demonstrate that the primary significance of the term is the generic name of the goods. See In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). In the end, the Board concluded that the evidence failed to show that the primary significance of the term MULLET to the consuming public was a type of bike, but instead that it was understood that MULLET was a bike provided by a particular company. Since there were doubts about the generic nature of the term, the Board resolved the doubts in applicant’s favor. If you have a concern that your proposed mark is generic, or another trademark related question, please contact the firm for a courtesy consultation.