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The United States Patent and Trademark Office (USPTO) issued a new guide clarifying the examination evidentiary standard for marks refused for genericness.[1] The new guide lowers an Examining Attorney’s evidentiary burden for supporting a genericness refusal from a “clear evidence” standard to a “reasonable basis” standard.[2]

The USPTO lowered an Examining Attorney’s evidentiary burden to resolve confusion within the Federal Circuit about the meaning of “clear evidence.”[3] The Federal Circuit first adopted the “clear evidence” standard for a genericness refusal in In re Merril Lynch, Pierce, Fenner, and Smith, Inc.[4] In that case, the Court reasoned that § 1305.04 of the Trademark Manual of Examining Procedure (TMEP) “required a showing based on ‘clear evidence of generic use.’”[5] The Federal Circuit continued enforcing this higher evidentiary burden for Examining Attorneys despite there being a lower “standard for a third party to remove a presumptively valid registered mark from the register” based on genericness.[6]

The USPTO, in lowering the Examiner’s evidentiary burden, argued that “the term ‘clear’ was meant to convey the ordinary meaning of the term, not an evidentiary burden, [and] was not intended by the TMEP.”[7] Further, the USPTO pointed out that the Federal Circuit has consistently required only a rational basis standard for other types of refusals by Examining Attorneys.[8] Thus, to be consistent, the “clear evidence” standard will no longer be used for genericness refusals issued by Examining Attorneys.

The USPTO’s decision to lower the examination evidentiary standard for generic marks comes after the recent Booking.com decision.[9] In that case, the Supreme Court of the United States rejected the USPTO’s rule “that ‘generic.com’ terms are generic names.”[10] Instead, the Court held that whether any given “generic.com” term is generic depends on consumer perception of the term, finding that Booking.com indicated source origin and was, therefore, not generic.[11]

While the Booking.com decision may perhaps have opened the doors for possible registration of more “generic.com” marks, the USPTO’s new guidance may just shut many of those doors. Lowering an Examining Attorney’s burden for supporting a genericness refusal may lead to an increase in genericness refusals, including “generic.com” mark refusals, since it is now easier for Examiners to reject generic marks. But if an applicant can show evidence of consumer perception of a purportedly generic designation as an indicator of source origin, as was held in the Booking.com case, they may just be able to keep those doors open. Time will tell.

[1] See Examination Guide 1-22 “Clarification of Examination Evidentiary Standard for Marks Refused as Generic,” USPTO (May 2022).

[2] Id. at 1.

[3] Id.

[4] Id. at 2.

[5] Id.

[6] Id. n.11.

[7] Id. at 2.

[8] Id.

[9] See USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020).

[10] Id. at 2307.

[11] Id.