At the end of last month, the United States Patent and Trademark Office (“USPTO”) released a guide clarifying how they were approaching the refusals of applied-for marks that could be generic. In the past, examining attorneys at the USPTO used a heightened “clear evidence” standard when refusing an applied-for mark for genericness, which resulted in rare genericness refusals. The USPTO has clarified that now when examining attorneys refuse an applied-for trademark for genericness, they need to show only a reasonable basis for the refusal, after which the burden shifts to the applicant to argue why the applied-for mark should be eligible for registration on the Principal or Supplemental Register.

But what does this mean for trademark applicants at the USPTO? And is there anything trademark applicants should be aware of as they make trademark filing decisions?

  1. The Ultimate Genericness Standard Remains the Same.

First and foremost, applicants should understand that the ultimate standard for genericness remains the same. Generic terms are still ineligible for federal registration. The USPTO examining attorneys will consider the same evidence of genericness in determining the primary significance of the applied-for mark to consumers (dictionaries, usage by consumers and competitors, consumer surveys, etc.). So, what changed?

The change implemented by this USPTO examination guide is intended to make it easier for examining attorneys to refuse applied-for marks on the basis of genericness. Before this guide, examining attorneys were expected to meet a heightened standard before refusing a mark for genericness, which meant an increased burden on the examining attorneys and fewer refusals. By contrast, third parties challenging an application or registration in court or at the Trademark Trial and Appeal Board needed to meet only a “preponderance of the evidence” standard. This guide harmonizes those two standards and makes clear that the standard for examining attorneys is no different than that of a third party.

  1. You Should Expect More Genericness Refusals.

The first-place applicants will see this change will be in an increased number of genericness refusals. With the new, “lower” standard, examining attorneys will be more likely to issue genericness refusals where in the past they may have only refused an applied-for mark as merely descriptive (and therefore still potentially eligible for registration on the Supplemental Register). If you are filing an application on a trademark on or close to that conceptual borderline, you should not be surprised to receive a genericness refusal, which means a more difficult path to registration.

  1. You Should Discuss the Strength of Your Proposed Marks with an Attorney.

It’s always a good idea for trademark applicants to discuss the conceptual strength of their new trademarks with their attorneys. Strong trademark rights start with strong trademarks. The recent USPTO examination guide highlights that this type of counseling is more important than ever. Trademarks exist on a conceptual spectrum from the strongest arbitrary and fanciful marks on one end, to weaker descriptive marks and unprotectable generic terms on the other end. Your attorney can help you spot potential issues with the conceptual strength of your marks before you spend the time and money at the USPTO and in your marketing efforts. Generic terms are not registrable at the USPTO and don’t create protectable trademark rights that can be enforced against competitors or would-be infringers. The best time to spot these problems is before you adopt a trademark, and that means having a discussion with your attorney about how to strengthen a proposed mark.

  1. Be Careful with Your Own Usage of Your Marks.

The other important conversation to have with your attorney is about the proper usage of your own trademarks. One of the favorite types of genericness evidence used by challengers of trademarks is evidence that the trademark owner has been using their own mark generically. How can a trademark applicant dispute that a proposed mark is generic when they themselves have been using the proposed mark in a generic manner? Examining attorneys at the USPTO already check applicants’ websites as part of their trademark application reviews, and they will no doubt pounce on evidence that an applicant has been using their applied-for mark generically. Make sure that you understand the proper way to use your trademarks both to strengthen your trademark rights and to avoid genericness challenges. If you have questions: ask!

  1. The End Result Should be a Cleaner Marketplace.

In the end, the result of this examination guide and the revised standard of review for examining attorneys should be a “cleaner” marketplace. It was not uncommon in the past to see potential trademark plaintiffs asserting trademark registrations for terms that were at best questionably generic. Federal trademark registration on the Principal Register creates a presumption of validity, which meant that in the past the recipients of these challenges faced the burden of showing these asserted terms were generic. The revised standard of review for examining attorneys will weed out many of these generic terms and prevent their registration, which means fewer trademark plaintiffs asserting rights in generic terms. This means lower costs and fewer challenges faced by companies in the marketplace, which can only be a good thing!

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The clarification issued by the USPTO should help shift some of the burden of challenging potentially generic terms from companies to the USPTO. But we also understand that evidentiary standards and the conceptual strength of trademarks can be confusing. If you have questions about this new examination guide or what it means for your business, reach out and ask!

One of the questions we hear the most from current and prospective clients is whether they should be filing a federal trademark application to protect a certain trademark. This question is often followed up with the question of which trademarks should they protect. Identifying which trademarks are important to protect and where you will get the most value out of your legal dollars is a common question and – like most legal questions – does not have a simple answer. However, there are a few touchstone questions that will guide you toward the answer that is right for you. These same questions apply whether you are considering a traditional word trademark or whether the trademark you are considering is a logo, design, color scheme, slogan, or other less traditional trademark.

  1. Do You Care if Someone Else Uses it?

The first question you should ask yourself is whether you would mind if another company or individual used your trademark. If third party use would not bother you, then you will probably not see much value in a federal trademark application. Whether you have a federal registration or are relying on common law trademark rights, owning a trademark requires some level of enforcement and policing the marketplace. If you don’t have the desire to take on this enforcement, your trademark may lose its distinctiveness over time or even stop functioning as a trademark.

One caveat here is a situation where you don’t care if someone else uses it, but you don’t want a competitor or third party to prevent you from using the mark. This type of “defensive” trademark strategy is not unusual and can be appropriate in many situations. For example if you don’t see yourself as an aggressive litigant but you want the peace of mind that you won’t need to change your packaging and branding, you may find a trademark registration to be useful. A federal trademark registration creates a presumption of ownership and validity that can cause potential aggressors to think twice before challenging you. At the very least you might have increased negotiating leverage in a future dispute. For the relatively low cost of prosecuting a trademark application, you might improve your business position substantially in the future.

  1. Is the Trademark Protectable? Is it a Trademark at All?

Many companies rush to file trademark applications before asking themselves whether their trademark is protectable or whether it is even a trademark at all. Spending time and money on a trademark application and then on future disputes only to discover that your trademark is too weak to be protectable is not an ideal situation. Trademarks can be unprotectable for a number of reasons – for example, weakness in a descriptive sense, genericness, an overly crowded field. It is important to think about this strength and this protectability when choosing a trademark and especially before filing a federal trademark application.

Before filing a trademark application it is also a good practice to think about how you will actually be putting your trademark into commerce. Trademarks are intended to signify the source of a good or service and generally speaking need to have a direct connection to that good or service – for example incorporating a trademark onto a product tag or label instead of using the trademark solely in advertising. If you have an otherwise protectable trademark but don’t have plans to use it in a trademark sense, you may not see value in filing a federal trademark application. Alternatively, if you do want to protect the trademark you may need to adjust how you will be putting the trademark into use on your goods and services.

  1. Did You Spend a Lot of Time/Money/Effort Creating it?

If your trademark was the result of an expensive brand development effort, you certainly would be more willing to spend the money and time needed for a federal trademark application. Many companies will file multiple trademark applications on potential trademarks during a large branding effort, with the goal of starting the process for several potential trademarks and identifying potential issues as early as possible. Generally speaking, the earlier issues can be identified, the more flexibility you will have in addressing them in a way that avoids significant expense. Even if you did not spend a significant amount of time or effort creating a specific trademark, if that mark is part of a larger family of marks or otherwise has elements in common with other important trademarks you own, having a federal trademark registration can work to strengthen all of your marks.

  1. Is the Trademark Associated With a Large Product Launch?

On a similar note, a trademark associated with a large product launch is another area where a filing would usually be warranted. A large product launch raises practical issues to consider including marketing/advertising, product labeling, and packaging, just to name a few. Filing a trademark application early in your development process can help identify issues when there is still time available to address them without significant costs. Imagine the cost associated with packaging thousands of products only to find out that a trademark needs to be changed and those products all need to be repackaged. Obtaining a trademark registration can give you some level of comfort during your product launch that you will not see objections from third parties and, if you do, that you have the legal position to defend against those objections.

  1. Do You Have Close Competitors?

In many industries, companies keep a close eye on new products their competitors are releasing, new brands they are developing, and how those brands are connecting with customers. If you are in that type of industry, you might be more willing to file trademark applications to protect your new brands. A trademark registration can discourage competitors from attempting to mimic your brands, and cement a strong legal position from which to assert your rights. Having a strong trademark and branding policy – including regular filing of trademark applications – can signal to competitors that they should give your brands a wide berth.

As mentioned above, trademark registrations can also serve a defensive purpose. In the event a competitor feels that you have encroached on their rights, you may want the option to rely on a trademark registration’s rebuttable presumptions of ownership and validity. Having the foresight to file a trademark application can improve your legal position in such a dispute and avoid a situation where you are bullied into changing your brand just to avoid legal expenses.

  1. Do You Have Partners or Investors to Impress?

If you are still on the fence about filing a trademark application on your brand, you might consider how your present and future partners and investors will view a trademark application or registration. While you want to make sure you are being fiscally responsible and not over-filing, having a trademark filing policy in place can demonstrate to your partners that you are protecting your investment and setting a strong foundation for the future. Trademark registration is only a part of a strong branding policy, but it is an important part.


There is no single strategy for when it is appropriate or recommended to file a trademark application on a brand. As with most questions in the legal and business world, there are a variety of factors to consider and you will need to find a strategy that works with your business and with your budget.

On Monday the Supreme Court issued a highly anticipated decision in United States Patent and Trademark Office v. Booking.com, ruling that a term is generic for a class of goods or services only if the term has that meaning to consumers, and rejecting the United States Patent and Trademark Office’s (“USPTO”) per se rule that a combination of a generic term and a generic top level domain like .com is necessarily generic.

Booking.com is a travel company that provides hotel reservations and other services under the brand Booking.com and at the domain name booking.com. The USPTO had refused registration of four of Booking.com’s trademark applications on the ground that the term was generic and therefore unregistrable. Unlike terms that can create trademark significance either through their inherent distinctiveness or acquired distinctiveness, generic terms are the name of the good itself and are ordinarily ineligible for protection as trademarks at all. Booking.com appealed the USPTO examining attorney’s decision to the Trademark Trial and Appeal Board who affirmed the refusal. Booking.com appealed that decision to the United States District Court, introducing additional evidence of consumer perception. In large part based on this additional evidence, the District Court reversed the USPTO decision. The Appeals Court affirmed the District Court and the case was eventually argued before the Supreme Court on May 4, 2020 by telephone conference as a result of the coronavirus outbreak.

In reaching its decision to allow registration of the Booking.com trademark, the Supreme Court noted three core trademark principles that were guiding its analysis. First, a generic term should name a class of goods or services, rather than any particular feature or exemplification of the class. Second, for a compound term the distinctiveness inquiry should focus on the term’s meaning as a whole, not its parts in isolation. And third, the relevant meaning of a term is its meaning to consumers. The Supreme Court refused to adopt the USPTO’s view that when a generic term is combined with a generic top-level domain, the resulting combination is generic. The Court noted that the USPTO had previously been inconsistent in allowing registration of marks like art.com or dating.com. The Court also pointed out that while a top-level domain may be generic, it has the added significance of referring to a specific website associated with the applicant. Consumers mildly familiar with the internet will understand the term to refer to some specific entity. Finally, the Court noted that allowing trademark protection for a term like Booking.com will not hinder competitors any more than a descriptive term would.

The Booking.com decision is an important one for trademark law although its impact is not likely to affect a large number of trademark applicants. Given the relative ease with which domain names can be registered and collected by third-parties, combined with the high demand for generic top-level domains, it is less likely that a trademark applicant will be able to acquire a domain for a generic word that identifies their business. The Booking.com site was created in 1996 at the beginning of the dot-com bubble – two years before Pets.com was created and three years before Napster was created. The internet is a different place now for better or worse. Also very significant to the Booking.com decision is the consumer perception that Booking.com had been able to create over the years through its advertising and marketing campaigns. The difficulty in creating that consumer awareness may somewhat limit the practical application of this recent decision. That impact remains to be seen – as does the question of whether Booking.com will announce any special travel deals to celebrate the victory.

Small business efforts to patent technology which deals with the COVID-19 outbreak will be getting a boost thanks to the United States Patent and Trademark Office (USPTO). Effective May 14, 2020, the USPTO has opened an express lane for certain patent applications which are directed to COVID-19 related technology, and are filed by applicants who meet the USPTO’s requirements for small or micro entity status at the USPTO (for example, having fewer than 500 employees, among other things). Patent applications accepted into the program will receive fast-tracked examination without the usual fees for the program which can otherwise total several thousand dollars.

Under the COVID Fast Track Program, up to 500 COVID-19 related patent applications, filed by small or micro entities and accompanied by the proper USPTO Form sb0450, will be accepted into the program and examined on a prioritized basis. The goal of the USPTO for patent applications accepted into the COVID Fast Track Program is to reach final disposition (e.g., allowance, final rejection, etc.) within 12 months of the application filing date. If the applicant replies to all USPTO communications within 30 days, the USPTO will endeavor to reach final disposition within 6 months.

In addition to the applicant(s) qualifying for small or micro entity status, to participate in the COVID Fast Track Program the patent application must, among other things:

  1. contain one or more claims directed to a product or process related to COVID-19;
  2. the COVID-19 related product or process must also be subject to an applicable Food and Drug Administration (FDA) and approval for COVID-19 use;
  3. (a) be a new U.S. nonprovisional or international (PCT) patent application, or (b) claim priority to one U.S. non-provisional utility or plant patent application, or to one international (PCT) patent application;
  4. be accompanied by the proper form (USPTO sb0450), and
  5. be filed electronically through the USPTO website.

Requirements and instructions for filing patent applications under this COVID-19 Prioritized Examination Pilot Program (COVID Fast Track Program) are provided on a dedicated USPTO webpage. The complete USPTO announcement for the COVID Fast Track Program can be found in the Federal Register. For questions regarding the COVID-19 Fast Track Program and whether you might be an appropriate applicant, please feel free to reach out to your Cole Schotz attorney.


As the law continues to evolve on these matters, please note that this article is current as of date and time of publication and may not reflect subsequent developments. The content and interpretation of the issues addressed herein is subject to change. Cole Schotz P.C. disclaims any and all liability with respect to actions taken or not taken based on any or all of the contents of this publication to the fullest extent permitted by law. This is for general informational purposes and does not constitute legal advice or create an attorney-client relationship. Do not act or refrain from acting upon the information contained in this publication without obtaining legal, financial and tax advice.  For further information, please do not hesitate to reach out to your firm contact or to any of the attorneys listed in this publication.

Firstly, we hope that everyone is staying safe and handling the present circumstances as well as possible. The United States Patent and Trademark Office (USPTO) has taken steps to accommodate intellectual property owners affected by the coronavirus by extending certain patent and trademark-related deadlines. Below is a quick summary of those extended deadlines and the requirements for those extensions. If you have any questions about how these changes could impact you, please reach out to your attorney.

TRADEMARKS

For due dates falling between March 27, 2020 and April 30, 2020 on the types of deadlines listed below, the USPTO is providing applicants and registrants with an extension of 30 days, providing the filing is accompanied by a statement that the delay in filing or payment was due to the coronavirus outbreak. The applicable deadlines include:

  • Responses to office actions including notices of appeal from a final refusal;
  • Statement of use deadlines or requests for the extension of time to file a statement of use;
  • Notices of opposition or requests for the extension of time to file a notice of opposition;
  • Claims of priority based on a foreign application filed within the previous 6 months;
  • Claims of priority for extensions of protection filed through the International Bureau;
  • Transformation of an extension of protection into a United States application within 3 months of the cancellation of an international registration;
  • Affidavits of use or excusable non-use under Section 8;
  • Renewal applications under Section 9; or
  • Affidavits of use or excusable non-use for extensions of protection.

The USPTO has also noted that in Trademark Trial and Appeal Board situations not covered above, requests or motions for additional time can be made in appropriate circumstances. Note also that to the extent applications and registrations are abandoned due to an inability to timely respond to trademark-related USPTO communications due to the coronavirus outbreak, the USPTO is waiving the fees associated with a petition to revive.

PATENTS

For due dates falling between March 27, 2020 and April 30, 2020 on the types of deadlines listed below, the USPTO is providing applicants and registrants with an extension of 30 days, providing the filing is accompanied by a statement that the delay in filing or payment was due to the coronavirus outbreak. The applicable deadlines include:

  • Replies to office notices issued during pre-examination processing by a small or micro entity;
  • Replies to office notices or actions issued during examination or patent publication processing;
  • Issue fees;
  • Notices of appeal under 37 CFR § 41.31;
  • Appeal briefs under 37 CFR § 41.37;
  • Reply briefs under 37 CFR § 41.41;
  • Appeal forwarding fees under 37 CFR § 41.45;
  • Requests for an oral hearing before the Patent Trial and Appeal Board (PTAB);
  • Responses to a substitute examiner’s answer;
  • Amendments when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection;
  • Maintenance fees, filed by a small or micro entity; or
  • Requests for rehearing of a PTAB decision.

Upon request to the USPTO affirming that a filing due between March 27, 2020 and April 30, 2020 (inclusive) was or may be delayed due to the coronavirus outbreak, the PTAB will provide a 30-day extension of time for:

  • A request for rehearing of a PTAB decision;
  • A petition to the Chief Judge; or
  • A patent owner preliminary response in a trial proceeding or any related responsive filings.

The USPTO has also noted that in PTAB situations not covered above, inquiries about possible extensions of time should be made at 571-272-9797 or by email at Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals) or InterferenceTrialSection@uspto.gov (for interferences).