USPTO Updates Exam Guide for Generic Marks

genericism trademark

On May 23, 2022, the U.S. Patent and Trademark Office updated its exam guideline for examining generic marks, Examination Guide 1-22. The guideline clarifies that the establishment of a prima facie case of generic marks will be based on the reasonable basis standard, which is the same standard used for other substantive refusals of trademark …

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That Sucks! Otherwise Generic gTLD Still Non-Registrable Because Not Attached with Preceding Domain Name

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On February 2, 2022, the Court of Appeals for the Federal Circuit affirmed in In re Vox Populi Registry Ltd.,[1] the decision of the USPTO’s Trademark Trial and Appeal Board (TTAB) refusing registration to .SUCKS as a service mark for Vox’s domain name registry services. However, the Fed Circuit agreed with the TTAB in that …

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SCOTUS Watch: SCOTUS Finds Adding “.com” to “Booking” Makes it a Non-Generic Registrable Mark

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In a major ruling, the U.S. Supreme Court held in U.S.P.T.O. v. Booking.com B.V.,[1] that an otherwise generic mark used in commerce conveys source-identifying characteristics when used with the “.com” top-level domain (TLD).  In her majority opinion, Justice Ginsburg opined that since only one domain name owner can hold one particular domain name at any …

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Fed Circuit Watch: TTAB Fails Genericness Test

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In a rare review of a Trademark Trial and Appeal Board (TTAB) case, the Court of Appeals for the Federal Circuit vacated and remanded the decision in Royal Crown Co., Inc. v. The Coca-Cola Co.,[1] involving the doctrine of trademark genericism.  The Fed Circuit panel found fault with the TTAB’s analysis of the test for …

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