[E-trademarks] Must a genericy refusal be finalized?

[Laura Geyer]

Honored colleagues:

So, let’s say hypothetically one had a final refusal to register based on mere descriptiveness. However, that refusal also added a genericy* “advisory” concluding that “… the trademark examining attorney cannot recommend that applicant amend the application to proceed … on the Supplemental Register as possible response options to this refusal.”

Setting aside the mere decriptiveness issue, it appears (based on the hypothetical clarification that one might have requested prior to throwing away client $$ on a response, an AAU, and lawyer time for that stuff) that although refusal based on genericy is one based on overlapping but ultimately different grounds, there is no need to make that determination final. That builds a grenade into an OA -- the only way to find out whether the mark will be ultimately refused as generic is to pull the pin and file the AAU (blowing the filing fee and lawyer time to do that) and only at that point will the mystery be revealed either in an approval or the kablooey of a new final refusal. This seems absurd. Why is a genericy refusal not (like any ground for refusal) one that must be made final with other grounds for refusal in such an OA, since there is no need for the evidence of use to be examined in order to make that ruling?

And if the grenade is indeed correctly included, what’s the betting on ultimate chances of refusal? 95%? 85% 75%?

*[I will persist in using this term – with apologies to Gilbert and Sullivan]

“Genericy, genericy”
The OED cries “heresy”
But other terms are awkward, see
So let’s all use “genericy”

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/
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