Registering Trademarks: Overcoming Genericness Refusals, New Trademark Examination Evidentiary Standard for Genericness

This CLE course will guide trademark counsel on the new Examination Guide on genericness. The panel will discuss how examining attorneys at the USPTO and panels at the TTAB decide the issue of genericism as it relates to trademark applications. The panel will outline approaches that work and don't work for avoiding or overcoming refusals and responding to genericness rejections.

The USPTO clarified the standard for refusing trademark applications on genericness grounds in its recently issued Examination Guide. Previously the TTAB required a showing of clear and convincing evidence of genericness.

This new standard provides for consistency in evaluating substantive issues, and it will be easier for examining attorneys to refuse trademark applications based on genericness. Because there will likely be more genericness refusals, trademark applicants should take steps to ensure the mark is not generic.

Before filing, trademark counsel should evaluate facts and make critical decisions to avoid refusal for genericness. After an application is filed, if it is refused, trademark counsel often have options for overcoming such refusals.

Listen as our authoritative panel of IP attorneys discusses how examining attorneys at the USPTO and panels at the TTAB decide the issue of genericism in trademark applications and reviews the new Examination Guide. The panel will outline approaches that work and don't work for avoiding or overcoming refusals and responding to genericism rejections.