The USPTO has issued Examination Guide 1-22, "Clarification of Examination Evidentiary Standard for Marks Refused as Generic." [pdf here]. This guide "clarifies that the standard for an examining attorney to establish a prima facie case of genericness is the same as for other refusals, namely, there must be sufficient evidence to support a reasonable predicate for the refusal under the applicable legal standard."
Prior USPTO examination guidance suggested a heightened, "clear evidence" standard for an examining attorney to establish a prima facie case of genericness. Any heightened standard would be inconsistent with both (1) the standard for third parties to challenge the registration of marks as generic and (2) the "reasonable predicate" meaning of "prima facie case" in the context of other refusals in examination.
This examination guide clarifies that an examining attorney does not bear a greater burden in supporting a position that an applied-for mark is generic beyond the evidentiary showing required by the relevant legal test.
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To resolve the confusion, the USPTO will no longer use the terminology "clear evidence" in the TMEP to refer to the examining attorney's burden to support genericness refusals.
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TTABlogger comment: If you consider genericness as a subset of failure-to-function refusals, then this may be another step in the enlargement of the failure-to-function net.
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