When a trademark becomes ubiquitous with a product or service, it becomes generic and is therefore not capable of protection as the mark cannot function as a trademark. The process of a mark becoming generic and the former owner’s rights being terminated is called ‘genericide.’ For example, consider ZIPPER, XEROX, ESCALATOR, and TRAMPOLINE – all formerly protected trademarks that have since been deemed generic.
For decades, the USPTO required “clear evidence” that a trademark was generic before refusing to register the applied-for mark. However, the policy gradually changed to ‘applicable’ in federal courts, influencing the evidentiary standard to establish genericide even though “there is no statutory basis for applying a heightened standard” (see USPTO, Examination Guide 1-22: Clarification of Examination Evidentiary Standard for Marks Refused as Generic (May 2022)). In various case examples, the clear evidence policy became conflated with “clear and convincing evidence,” a standard that was not intended by the Trademark Manual of Examining Procedure. Rather, the refusal to register a mark on the grounds of genericide under the clear evidence standard relied on a preponderance of the evidence, causing confusion among USPTO examiners, practitioners, and federal courts.
In efforts to settle the confusion, in May 2022 the USPTO changed the old rule in the trademark manual, now only requiring examiners to show a “reasonable predicate” (ie, reasonable basis) or “basis for the finding or conclusion underpinning the refusal” for issuing genericness refusals (see USPTO, Examination Guide 1-22: Clarification of Examination Evidentiary Standard for Marks Refused as Generic (May 2022); see also In re Becton, Dickinson & Co, 675 F.3d 1368, 1374, 102 USPQ2d 1372, 1376-77 (Federal Circuit 2012 (the Federal Circuit also has held that an examining attorney’s prima facie case for a refusal must be rebutted by “competent evidence,” which requires “proof by preponderant evidence”)). Keep in mind that the type of evidence used to support a genericide refusal remains the same, including but not limited to the dictionary definition of the term as it relates to the applied-for goods or services, consumer surveys, and online publications, among many others.
So, what does this mean moving forward? While the bar is lowered for what is sufficient support to issue a genericness refusal, the standard for establishing a prima facie case of genericness remains the same as for other refusals – there must be sufficient evidence to support a reasonable basis for the refusal under the applicable legal standard. In light of this lower bar, we can expect an increase in genericide refusals and affirmed TTAB proceedings and, potentially, an uptick in litigation disputes.
Federal circuits are expected to opine on whether they will adopt the reasonable basis approach in light of the USPTO’s change in policy.
This article originally appeared in World Trademark Review Weekly on Aug. 25, 2022, and is reprinted with permission.