Minutes - TRIPS Council Special Session - View details of the intervention/statement

Ambassador D. Mwape (Zambia)
United States of America
B.ii Second sub-question
110. The representative of the United States said that with respect to the second sub-question he would again refer to the situation of a foreign consortium applying for registration of a foreign geographical indication as a US certification mark, with the reminder that his answers were based on an initial review and might be supplemented at a later stage. 111. With respect to part a of the second sub-question, i.e. the issue of genericness raised during the application process, and as noted in his response to the first sub-question, the USPTO examined relevant evidence in making its determination. With respect to genericness, the USPTO bore the burden of demonstrating that a mark was generic by "clear evidence", which was a standard used by the courts under the US system. Such evidence would now include relying on dictionaries and Internet resources. However, the applicant did not have to demonstrate that the mark was not generic; it was the examining attorney that had the burden of demonstrating that it was indeed generic. A 1979 US court decision was instructive on the definition of a "generic term". "Generic terms, by definition, are incapable of indicating source, are the antithesis of trademarks and can never attain trademark status". The court's explanation was helpful and shed light on policy reasons against registrations of generic terms as trademarks. In its view, "the reason is plain: to allow trademark protection for generic terms, i.e. names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are". 112. With respect to the issue of genericness and extraterritoriality, his delegation agreed with the views expressed by the Australian delegation. 113. With respect to the US system, he said that, while the USPTO had to demonstrate genericness, there was no starting presumption that a term was or was not generic. As he had previously noted, all relevant evidence was examined on a case-by-case basis and depended on the factual circumstances of each situation. In that connection, his delegation fully agreed with the New Zealand delegation, and would only add that, while the USPTO took information into account, that did not necessarily mean that such information was always relevant, probative, or dispositive in each and every legal and factual context. 114. With regard to part b of the second sub-question, i.e. the issue of genericness in the context of a challenge of a protected term, he said that the party claiming genericness, that is the party challenging the mark, bore the burden of proving genericness. That could be only as a ground for cancellation of the registration or as a counter-claim by the respondent. In proceedings between private parties, evidence of the public's understanding of the term might be obtained from any competent source, such as purchasers' testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications.
The Special Session took note of the statements made.
TN/IP/M/26