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

[Alex Butterman]

Laura:

I agree with you that this “genericy” determination is one of the most unintuitive, complicated processes in application examination that I have experienced, and I have regularly seen experienced TM attorneys and inexperienced TM examiners (including myself) get this wrong. I am not sure how this process developed, i.e. if it is a matter of statutory interpretation or based upon the particular language of the Lanham Act, but the TMEP explains the examination procedure at Section 1209.02(a) (“The examining attorney must not initially issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services, unless the applicant asserted that the mark has acquired distinctiveness under §2(f) in the application itself.”)

Essentially, the determination of the examiner as to whether or not a mark is generic boils down to the determination of whether or not the mark can acquire distinctiveness. And the definition of a mark on the Supplemental Register is a mark “capable of acquiring distinctiveness.” The Supplemental Register is effectively a holding pattern for a mark in “no man’s land” because the mark is technically not sufficiently distinctive to be considered an enforceable mark, but the mark could be on its way there. Consequently, a genericy determination cannot be made until the applicant either requests registration on the Supplemental Register or claims 2(f). So as you note, this becomes approximately a 4-plus step process if the application is based upon ITU and a 3-step process if based upon use: 1) descriptiveness refusal; 2) allegation of use and SR registration amendment (or just SR amendment if already in use); 3) initial refusal of the SR amendment or 2(f) claim; 4) final refusal of the SR or 2(f) amendment. The 2(f) amending process can even extend across several office actions if the refusals initially argue the particular level of evidence required to claim 2(f) for the particular mark. There may also be times when this determination is made in the ITU context, such as an application based upon Section 44e which can also be amended to the SR.

Therefore, the fastest way to force this issue in examination is to seek SR registration or claim 2(f) and it probably is most cost effective to do so with minimal argument after the descriptiveness refusal has initially been argued. Then, once the examiner contends that SR and 2(f) registration are not available because the mark is allegedly generic, all resources can be devoted to arguing that the mark is capable of or has actually acquired distinctiveness. This is why this process is probably better suited to marks which have been in use and need to better protect the use rights that have accrued. If the mark has not yet been in use, the genericy determination seems less impactful because the applicant has less invested in the mark and may be content knowing that the applicant cannot be prevented from using the term even though it cannot be considered a mark and the applicant cannot exclude others from use of the term.

I got this wrong in one of the first cases I examined which I refused because of descriptiveness and which ended up being the only refusal I had to defend on appeal. My mistake was initially issuing the genericy warning which set the tone and substance of subsequent arguments to be whether or not the mark was generic. Then, when it came time to defend the refusal, my mentor had explained that the genericy issue was not yet ripe because the applicant had not sought an SR registration. So the appeal proceeded with me needing only to defend that the mark was merely descriptive, which it clearly was. I keep seeing examiners make this same error. This was the reason why a couple of years ago, I prosecuted an application that received about six office actions arguing whether a 2(f) or SR registration could issue and when the 4th OA was declared “final,” it really was not. We finally registered the mark with a lot of it being disclaimed and the appeal we initiated was dropped by a new examiner being reassigned to the case and reconsidering the refusal.

I guess this is a long non-answer and commiseration.


Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 – BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Laura Geyer via E-trademarks
Sent: Monday, October 21, 2024 12:34 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Laura Geyer <lgeyer at ndgallilaw.com>
Subject: [EXT] [E-trademarks] Must a genericy refusal be finalized?

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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