Pryor Cashman Partner Dyan Finguerra-DuCharme, Co-Chair of the Trademark Group and a member of the Intellectual Property, Litigation, and Media + Entertainment Groups, spoke with Law360 about updates to the U.S. Patent and Trademark Office's approach to rejecting generic trademarks.
In "USPTO Update Brings Consistency To Genericness Standard," she evaluates the new 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.
"Perhaps the USPTO will start to place a larger premium on the principle of 'consistency,' a concept that the USPTO often claims it is not bound to follow during examination," she said.
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