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PTO makes genericness refusals for marks more likely

December 1, 2022
Year End 2022 IP Newsletter

Link to the Newsletter here

The U.S. Patent and Trademark Office (PTO) recently issued Examination Guide 1-22, “Clarification of Examination Evidentiary Standard for Marks Refused as Generic.” In it, the PTO clarifies its previous position on the evidentiary burden when a trademark examining attorney seeks to refuse to register a mark in the Principal or Supplemental Register because the mark is generic. The guide sets forth a standard that diverges from longstanding practice.

PTO refuses to go along

Earlier PTO examination guidance stated that an examining attorney must have “clear evidence” to establish an initial case of genericness, which an applicant could then attempt to rebut. This contrasts with the evidentiary standard applied when a party opposes or petitions to cancel a registration on genericness grounds in a cancellation proceeding before the Trademark Trial and Appeal Board. In those proceedings, a preponderance of the evidence standard applies: the challenger must show there’s a greater than 50% chance that its claim of genericness is true.

This discrepancy, the PTO says, created confusion over whether the evidentiary standard for a third party to remove a presumptively valid registered mark from the register was lower than the standard to prevent a mark from being registered to begin with. The new guidance clarifies that an examining attorney needn’t satisfy a higher evidentiary standard to support the position that a mark is generic. Rather, the examining attorney must have only sufficient evidence to support a “reasonable predicate” (that is, reasonable basis) for finding the mark generic.

According to the PTO, the application of a “clear and convincing evidence” standard has no statutory basis. It explains that the term “clear” in earlier guidance was intended to convey the ordinary meaning of the term, not an evidentiary burden.

A clear and convincing evidence burden, the PTO says, is inconsistent with the preponderance of the evidence burden the U.S. Court of Appeals for the Federal Circuit requires to prove claims that a registered mark is generic in a cancellation proceeding. It’s also inconsistent with the reasonable predicate evidentiary standard the court has applied to other types of substantive refusals in examinations.

Stay tuned

While the PTO has clarified its position on the proper evidentiary standard for examining attorneys’ genericness refusals, it remains to be seen how that position will affect future litigation over such refusals. Agency guidance doesn’t have the force of law, and courts could choose to continue to apply the clear evidence standard.