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

[Edward Timberlake]

I tend to think of a mere descriptiveness refusal as an assessment that the
mark-goods combination is (based on all of the facts) perhaps
redeemably merely descriptive (in that there could be reasons the
mark-goods combination is descriptive but is not merely descriptive).

I tend to think of a mere descriptiveness refusal with a generic advisory
as an assessment that the mark-goods combination is (based on all of the
facts) perhaps irredeemably merely descriptive, to the point of being
generic (in that there very likely aren't any reasons the marks-goods
combination could be anything other than the most extreme form of mere
descriptiveness known as generic).




Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Mon, Oct 21, 2024 at 12:35 PM Laura Geyer via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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/
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
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>
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