Finguerra-DuCharme Discusses Trademark Genericness Standard

"This is a long overdue housekeeping measure by the USPTO," said Dyan Finguerra-Ducharme of Pryor Cashman LLP. "It has made no sense that there was a difference in an evidentiary burden between examination and an inter partes proceeding."

Previously, a trademark applicant could appeal an examiner's refusal based on genericness at the Trademark Trial and Appeal Board for not meeting the clear evidence standard — only to have the board later find the mark to be generic under the lower standard of preponderance of the evidence, according to Finguerra-Ducharme.