The United States Patent and Trademark Office has recently released a new examination guide titled “Clarification of Examination Evidentiary Standard for Marks Refused as Generic”. In this new guide the burden on the trademark examiners has reduced.
Previously, to refuse a mark on basis that it was generic the examiner had to present “clear evidence”. According to the new guide the examiner must provide “sufficient evidence to support a reasonable predicate (i.e., reasonable basis) for the refusal under the applicable legal standard”. The standard for an examiner to establish a prima facie case of genericness of mark is same as other refusals.
This change however has no effect on the nature or types of evidence that is needed to be produced to prove the genericness of the applied trademark. Sources of evidence also still include dictionaries, usage by competitors and other sources that show how the meaning of a term is perceived.
Many attorneys analyzing the effects of this change predict more generic refusals of trademark applications, as the higher standard of “clear evidence” is now reduced. This may also lead to cleaner trademarks. There have also been concerns that there may be an increased workload to the USPTO office as more generic refusals may lead to more office action responses.
Reconsideration requests, and appeals. A decrease in filings may also be seen due to heightened weariness at the fact that an application has higher chances of being refused due to genericness.
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