- Posted on: Aug 1 2022
Generic terms—terms that are primarily understood to be the name of a product or service—cannot be trademarks.  For example, one cannot register APPLE as a trademark for (you guessed it) apples.  When a trademark becomes generic, the mark falls into the public domain, and anyone can use it.  Because becoming generic terminates the former owner’s trademark rights, this process is sometimes known as “genericide.” FLIP PHONE, ZIPPER, TRAMPOLINE, and ESCALATOR are some well-known examples of former trademarks lost to genericide.
For nearly forty years, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Manual of Examining Procedure (TMEP) required USPTO examiners to show “clear evidence” before denying federal registration of a mark on the basis that the mark was generic.  While the clear evidence requirement began its life merely as a statement of USPTO policy, it was soon adopted into and expanded by the caselaw of the U.S. Court of Appeals for the Federal Circuit (CAFC), the primary reviewing court over the USPTO. 
In May of 2022, however, the USPTO decided to discard the clear evidence requirement.  Moving forward, the USPTO has declared that its examiners need only show a “reasonable basis” for issuing genericness refusals.  This lowers the bar for refusing to register an applied-for mark as generic to essentially a “preponderance” (or “more likely than not”) standard, the same standard used for any other registration refusal. This about-face by the USPTO is surprising because neither the CAFC nor the Trademark Trial and Appeal Board (TTAB) reversed any of the numerous cases in which these judicial bodies have affirmed the clear evidence requirement. Further, the USPTO did not engage in any discussion or formal rulemaking under the Administrative Procedures Act about this significant change to an important rule.
The USPTO has offered two primary justifications for effectively “reversing” the CAFC’s adoption of the clear evidence requirement. First, the agency believes the Court’s precedents are based entirely on the USPTO’s own policy guidance in the TMEP.  In other words (to paraphrase the agency’s position), “what the USPTO has given, the USPTO can take away.” Second, the USPTO argues that the CAFC’s precedents are “inconsistent” because the Court requires a lesser “preponderance of the evidence” standard when genericness is at issue in trademark cancellation proceedings. 
The USPTO’s decision to do away with the clear evidence requirement is questionable for several reasons. First and foremost, Executive Branch agencies like the USPTO generally lack the authority to reverse the decisions (consistent or otherwise) of federal courts. An administrative agency can only promulgate binding regulations after a formal rulemaking process in which it first collects public comments on the proposed rule. But even this rulemaking process does not permit Executive Branch agencies to usurp the jurisdiction of the Judicial Branch. Moreover, it is not “inconsistent” to require a higher burden of proof when genericness is decided unilaterally by an examining attorney (a lawyer representing the USPTO) during the examination of one party’s application, as opposed to a neutral judge during a cancellation proceeding between two parties.
Additionally, the CAFC has not relied exclusively on the TMEP in upholding the clear evidence requirement. For example, in In re Hotels.com, after noting that the TMEP (at that time) required clear evidence of genericness, the Court went even further in explaining the merits of this heightened standard of proof. Specifically, the Court noted that “[t]o determine that a trademark is generic […] is a fateful step”  and also that “[t]he purpose of a standard of proof is to instruct the fact finder concerning the degree of confidence our society [expects] for a particular type of adjudication.”  These quotes are from the U.S. Court of Appeals for the Seventh Circuit and the U.S. Supreme Court, not the TMEP. Further, the TMEP is not established law; it is merely an administrative guide.  The CAFC also held that “clear evidence” means “clear and convincing evidence.”  The Court did not cite the TMEP for this interpretation, and the USPTO later said the Court’s interpretation “was not intended by the TMEP….” 
Finally, the USPTO’s retreat from the clear evidence standard may have significant Constitutional implications. Almost a century before the USPTO embraced the clear evidence standard, the U.S. Supreme Court recognized that trademark rights are property rights.  Therefore, trademark owners may attempt to challenge state action that effectively destroys their trademark rights—including a finding of genericness—under the Takings and Due Process Clauses of the U.S. Constitution. 
Even when it was required to show “clear evidence,” the USPTO still prevailed in 72% of genericness appeals that received a precedential decision from the Trademark Trial and Appeal Board (TTAB).  Now that the USPTO has untethered itself from the clear evidence requirement, expect genericness refusals to become more frequently issued, more stoutly maintained by USPTO examiners, and more frequently affirmed by the TTAB. As a result, we expect the Federal Circuit will soon have an opportunity to decide whether to allow the USPTO’s “reversal” of the Court’s endorsement of the “clear evidence” requirement for genericness refusals, and we are eager to see the Federal Circuit’s decision on this important issue.
The attorneys at Dunlap Bennett & Ludwig have decades of experience at the United States Patent and Trademark Office. For more information on how Dunlap Bennett & Ludwig can help you with your legal needs, contact us by calling 800-747-9354 or emailing email@example.com.
 E.g., In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987).
 See, e.g., Elliott v. Google, Inc., 860 F.3d 1151, 1154 (Fed. Cir. 2017).
 See Ty Inc. v. Softbelly’s Inc., 353 F.3d 528, 531 (7th Cir. 2003).
 See Merrill Lynch, 828 F.2d at 1571 (citing TMEP § 1305.04 (Revision 6 (1983)).
 See, e.g., Merrill Lynch, 828 F.2d at 1571; In re the American Fertility Society, 188 F.3d 1341 (Fed. Cir. 1999); and In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009).
 See U.S. Patent and Trademark Office, Examination Guide 1-22: Clarification of Examination Evidentiary Standard for Marks Refused as Generic (May 2022),
 See USPTO, Examination Guide 1-22 at 2.
 In re Hotels.com, 573 F.3d at 1302 (internal quotation marks omitted) (citing Cal. ex rel. Cooper v. Mitchell Bros’ Santa Ana Theater, 454 U.S. 90, 92-93 (1981)).
 Id. at 1302 (citing Top of Form
TY Inc. v. Softbelly’s, Inc., 353 F.3d 528, 531 (7th Cir. 2003)).Bottom of Form
 See In re Sones, 590 F.3d 1282, 1288 (Fed. Cir. 2009) (“We note that the TMEP is instructive, but ‘is not established law.’”).
 In re Hotels.com, 573 F.3d at 1302 (quoting Ramsey v. United Mine Workers of America, 401 U.S. 302, 309 (1971); Am-Pro Protective Agency, Inc. v. United States, 281 F.3d 1234, 1239–40 (Fed. Cir. 2002)).
 USPTO, Examination Guide 1-22 at 2.
 See In re Trade-Mark Cases, 100 U.S. 82, 92 (1879) (“The right to adopt and use a [trademark] has long been recognized by the common law [to be] a property right….”).
 See U.S. Const. amends. V, XIV.
 See LexisNexis, TTAB Decision Tracker: Genericness,
https://plus.lexis.com/document/openwebdocview/TTAB-Decision-Tracker-Genericness/?pddocfullpath=%2Fshared%2Fdocument%2Fanalytical-materials%2Furn%3AcontentItem%3A5CNT-P201-F8SS-61WD-00000-00&crid=eb70d978-50e1-41e8-aabb-c87c45c19a8c (last visited June 21, 2022) (18 of 25 precedential decisions issued by the TTAB between 2010 and 2021 held the mark(s) at issue were generic).