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Your source for news, updates and guidance on all things trademarks and intellectual property.

Alt Legal WebinarWho You Calling Generic?: Responding to Generic and Descriptive Office Actions

Alt Legal Team | January 31, 2021
3 min read

In this presentation, David Postolski, ABAIPL’s CLE Officer, enlightens practitioners on the strategic ins and outs of creating a durable and pervasive brand, especially one that uses words that may be deemed generic or descriptive by trademark offices around the world. Not everyone can come up with a fanciful trademark or have the marketing dollars for an arbitrary trademark, so many brand owners are resigned to creating brands and logos that may be deemed unregistrable by the Trademark Office. David lays out the risks and rewards for choosing marks that may be deemed less distinct and discusses strategies to ensure protection is not limited. Topics include:

  • Discussion of generic, descriptive, suggestive, arbitrary, and fanciful trademarks and the pros and cons of each
  • Strategies for registering seemingly generic or descriptive marks
  • Suggestions for overcoming generic or merely descriptive office actions

You can download the presentation slides here* and watch the recording here (registration required).

Timed Agenda

Introduction: 5 minutes

Spectrum of trademarks: 10 minutes

Generic trademarks: 10 minutes

Descriptive trademarks: 10 minutes

Booking.com discussion: 5 minutes

Best practices in overcoming and preparing for rejections from the TM office:  10 minutes

Q&A: 10 minutes

Resources

  • For more information about the Booking.com case, check out this webinar.

  • For more about genericide, check out this recording from last year’s Alt Legal Connect.

  • For more information about replying to an office action citing 2(e)(1) (descriptiveness refusal), check out this article.

  • For more about acquired distinctiveness, check out this article.

  • Here’s an article about office actions citing failure to function.

  • For more about common law trademarks, check out this article.

  • For more about the Principal vs. Supplemental registers, check out this article.

Speaker Bio

David Postolski, a partner at Gearhart Law, is a registered patent attorney and Intellectual Property attorney. With over 17 years’ experience, David specializes in assisting inventors, creators, artists, start-ups, entrepreneurs, early stage companies and emerging companies with their U.S and International intellectual property strategy, protection, enforcement and monetization. David is a frequent speaker and author on intellectual property issues surrounding emerging technologies (cannabis, crypto currency, 3d printing, gig economy), raising capital, business formation, licensing, and reward and equity based crowd funding. David is also a Professor at Temple University and Parsons School of Design where he teaches master level students about IP, ethics and other regulatory considerations in starting business ventures and products around design. David is the current Continuing Legal Education (CLE) Officer of the American Bar Association Section of Intellectual Property Law. He is the founder of their International Action Group and editor of their monthly newsletter. David remains very involved in the creation of New York State’s first federally approved patent pro bono program in conjunction with Volunteer Lawyers for the Arts.

*Alt Legal Clarification: On slides 17 and 18 in the presentation, CHAPSTICK®, XEROX®, TUPPERWARE®, BAND-AID®, KLEENEX®, VELCRO®, VASELINE®, POST-IT®, VELCRO®, JEEP®, and JACUZZI® are all registered trademarks of their respective owners. There are no “generic trademarks” as a mark either fails to act as a source identifier or a mark is a source identifier and serves as a trademark for particular goods and services.are all registered trademarks of their respective owners. There are no “generic trademarks” as a mark either fails to act as a source identifier or a mark is a source identifier and serves as a trademark for particular goods and services.

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