The US Patent and Trademark Office (USPTO) has issued a new guide clarifying the standard it uses for examining new applications for the registration of trademarks which may, in its view, be generic.

The new USPTO standard for reviewing allegedly generic marks was clarifies that Examiners refusing trademark registration applications on the basis that they are generic do not need to meet a “heightened” legal standard for issuance.

That is, Examiners refusing trademark registration applications as generic don’t have to prove anything more than they do when refusing an application on the basis that it is merely descriptive, geographically descriptive, or than when an application presents a likelihood of consumer confusion.

But what does “generic” mean with regard to trademark registration? And what exactly is the standard for generic refusals now?

This Article will address both of these questions and, then, go on to suggest a few ways to avoid generic refusals of your trademark registration applications.

What Is a Generic Trademark Registration Application Refusal?

A trademark must be sufficiently unique to be registered. That is, whether a business or product name, slogan, or logo, a trademark must, among other things, not:

• Be too similar to any other registered trademark;
• Be merely descriptive of the product or service with which it is associated in commercial use;
• Be merely descriptive of a geographic place;
• Be misleading in terms of the product, service, origin of the product or service, with which it is associated;
• Be an attempt to register subject-matter (such as the US flag) which cannot be registered under law;
• Be completely generic.

A trademark must be strong.

That  is, it must specifically identify you as the source of the product(s) or service(s) with which it is associated when you use it in your marketing or advertising efforts.

The strength of a trademark is thus generally measured along a spectrum, from weak to strong.

On the right-most end of the “spectrum of distinctiveness” is the fanciful trademark. This is, in the case of a word mark (business name, product name, or slogan), a term that has no meaning in the English language other than as its use as your trademark.

Think “Google” for an obvious example.

Approaching that level of strength is the arbitrary trademark. This is a term that does have meaning in the English language, however, that meaning has nothing to do with your product or service.

Think “Apple Computers” for a good arbitrary trademark. (They sell computers, not fruit, capeesh?)

A suggestive trademark is one that is starting to feel a bit too descriptive of your product or service but in support of which an argument can be made that it merely “suggests” that product or service rather than describing them outright. They are still registrable—but you can expect a fight with your USPTO Examiner on these.

Then, nearly all the way to the leftward end of this spectrum, we reach the “unregistrable” sorts of marks: descriptive and generic.

A descriptive mark is as described above. It is merely a statement of the product or service sold in association with the mark. Our usual example of a descriptive mark is that of a fictional company: The Detroit Hammer Company, which is a company in the Detroit area of Michigan that sells—you guessed it—hammers.

These marks will be refused. A snazzy logo used by a company with a name of this sort might be registered, but the odds of the entire “literal element” (company name) being required to be “disclaimed” in the registration is high-to-certain.

A descriptive mark might be able to be registered with weakened protection on the USPTO’s so-called Supplemental Register—but it will not be eligible for “full” registration on the Principal Register.

At the far left end of the spectrum is, finally, the generic trademark.

This is a term that has become so widely used interchangeably with the product or service in question by the consuming public that it has, in fact, become a generically used meaning that product or service for all intents and purposes.

A trademark that once was distinctive can, over time, become generic. Some well-known examples of this phenomenon are aspirin, granola, and heroin.

A trademark that is generic from the start (for example, “hammers”) will not only be unregistrable but cannot be registered even on the Supplemental Register, as well as suffering other legal drawbacks.

What Is the New Standard for USPTO Examiners Alleging Genericness?

When you file a trademark registration application, it is not a matter of simple form-filling.

Some online, cheap-o trademark registration websites would like you to think it’s as easy as that in order to convince you that you can just pay them $50 to do it rather than hiring an actual Michigan trademark attorney.

This is false.

6-8 months (or more, lately) after you file, even if your cheap-o website manages to draft your application competently, it will be examined by a USPTO staff attorney known as an Examiner.

This Examiner will review your application for issues, work hard to find them, and the issue a refusal, if any are found, known as an Office Action.

Some Office Actions are minor administrative matters. Some are more substantive, alleging a likelihood of confusion or that an application is merely descriptive or, indeed, generic.

If these latter sort of Office Actions are not overcome, the application will be refused and abandoned.

Only a licensed US attorney can “appear” (in person or electronically) before the USPTO to file and argue an Office Action. Your cheap-o form-filling website “service” will disappear into the darkness when an Office Action is issued.

Prior to the issuance of this new standard for issuing generic refusals, the USPTO Examiners did examine this issue with what is known as a “heightened standard.”

That is, this very serious allegation was only made when the Examiner found “clear evidence” on the face of the application and in the other available evidence at hand that the term in question was generic.

Although that doesn’t sound very shocking, it was, in fact, a weightier evidentiary burden to meet than was required for, say, a likelihood of confusion refusal.

The new standard makes it clear that the “clear evidence required” standard is no longer necessary in the issuance of a generic refusal. Instead, the USPTO guidance now states that Examiners do not need to meet any greater standard in issuing generic refusal than for any other sort of Office Action.

The type of evidence that Examiners may draw upon has not changed. In reviewing trademark registration applications, Examiners will still focus in on the term’s “primary significance to consumers” (i.e., “Does the word ‘hammer’ mean ‘a tool you pound stuff with’?”).

They will review the applications themselves, dictionaries, evidence of usage by consumers, and any other sources indicating how it is that consumers perceive a term’s meaning.

How To Avoid Generic Refusals of Your Trademark Registration Applications

Given all of this, the best way to avoid a generic refusal of your trademark registration application is, of course, to avoid using a generic trademark to begin with.

Be more creative than “the Detroit Hammer Company.” Think about your ideal customer, who they are, where they want to be, and how your product or service can get them there. What words or terms invoke that feeling that your ideal customer wants? What words can you invent that, on a sound or sonic basis, or even on a visual basis, can invoke that feeling?

There is a reason that pharmaceutical companies come up with such flower, made-up names for their new products.

Such terms make ideal trademarks.

The next way to avoid a generic trademark refusal is to work with an experienced trademark attorney who can advise you of the legal risks of your proposed mark (those cheap-o websites aren’t lawyers or law firms and absolutely cannot provide legal advice!) and suggest strategies for either re-branding if yours is potentially generic or for registration, where possible.

Resting your entire brand on the concept of saving a buck on attorney’s fees will bite you in the end. Your brand gives your business value. A brand that cannot be registered as a trademark cannot be protected.

A generic brand has no value.

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

Trademark law is a Federal practice area, and we represent clients across the United States—and globally for registration and maintenance needs.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.