Examination Guide 2-10 Examination Procedures for Section 2(f) Claims in Part Issued August 20, 2010




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Examination Guide 2-10

Examination Procedures for Section 2(f) Claims in Part

Issued August 20, 2010



Examination Guide 2-10 1

Examination Procedures for Section 2(f) Claims in Part 1

Issued August 20, 2010 1

I. INTRODUCTION 1

II. STANDARDS FOR ESTABLISHING ACQUIRED DISTINCTIVENESS FOR CLAIMS OF §2(f) IN PART 2

III. APPROPRIATE/ INAPPROPRIATE SITUATIONS FOR CLAIMING §2(f) IN PART 2

IV. CLAIMING §2(f) IN PART IN §1(b), §44, OR §66(a) APPLICATIONS 7

V. §2(f) IN PART NOTATIONS, LIMITATION STATEMENTS, AND RESTRICTION STATEMENTS 8




I. INTRODUCTION

Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), permits the registration of a mark that is not inherently distinctive on the Principal Register upon proof that the mark has acquired distinctiveness in relation to the applicant’s goods or services in commerce. A claim of acquired distinctiveness may apply to the entire mark or a portion of the mark (a claim of §2(f) “in part”).1 This examination guide focuses on claims of §2(f) in part in the context of two-dimensional marks, reviewing: (1) the standards for establishing acquired distinctiveness for claims of §2(f) in part; (2) appropriate and inappropriate situations for claiming §2(f) in part; (3) claims of §2(f) in part in applications filed under §1(b), §44, or §66(a); and (4) §2(f) in part notations, limitation statements, and restriction statements. It supersedes the Trademark Manual of Examining Procedure (TMEP), 6th Edition, to the extent any inconsistency exists.


II. STANDARDS FOR ESTABLISHING ACQUIRED DISTINCTIVENESS FOR CLAIMS OF §2(f) IN PART

The determination of whether a mark has acquired distinctiveness is a question of fact for which the applicant bears the burden of proof.2 The standards for establishing acquired distinctiveness are the same whether a claim of distinctiveness pertains to the entire mark or a portion of it.3 However, in a claim of §2(f) in part, the examining attorney must focus his/her review of the evidence submitted on the portion of the mark for which acquired distinctiveness is claimed, rather than on the entire mark.


Three basic types of evidence may be used to establish acquired distinctiveness for claims of §2(f) in part:



  1. A claim of ownership of one or more prior registrations on the Principal Register of the relevant portion of the mark for goods or services that are the same as or related to those named in the pending application;4

  2. A statement verified by the applicant that the relevant portion of the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made;5 or

  3. Actual evidence of acquired distinctiveness of the relevant portion of the mark.6

The amount and character of evidence required depends on the facts of each case and the nature of the mark sought to be registered.7 Moreover, a determination regarding the acceptability of a §2(f) claim depends on the nature of the mark and/or the evidence provided by the applicant.8


III. APPROPRIATE/ INAPPROPRIATE SITUATIONS FOR CLAIMING §2(f) IN PART

When a claim of acquired distinctiveness applies to a portion of a mark, the applicant must clearly identify the portion of the mark for which distinctiveness is claimed. Generally, the element that is the subject of the §2(f) claim must present a separate and distinct commercial impression apart from the other elements of the mark. That is, it must be a separable element in order for the applicant to assert that it has acquired distinctiveness as a mark.9 Consequently, if a mark is unitary for purposes of avoiding a disclaimer, a claim of §2(f) in part would generally not be appropriate since the elements are so merged together that they cannot be regarded as separable. If applicable, the applicant can claim §2(f) as to the entire unitary mark.


  1. Appropriate Situations for Claiming §2(f) in Part

    1. Descriptive Matter Combined with an Inherently Distinctive Element

Claiming §2(f) in part should generally be reserved for those situations where descriptive matter is combined with an inherently distinctive element, such as arbitrary words or an inherently distinctive design, and where the descriptive matter presents a separate and distinct commercial impression apart from the other matter in the mark.


For example, if the mark is TASTY SNACKERS for potato chips and the applicant can show acquired distinctiveness as to the descriptive word TASTY, the applicant must limit the claim under §2(f) to the word TASTY only (i.e., “2(f) in part as to TASTY”) since the term SNACKERS is inherently distinctive.
Similarly, if the mark is TASTY SNACKERS POTATO CHIPS for potato chips and the applicant can show acquired distinctiveness as to TASTY, the applicant must limit the claim under §2(f) to the word TASTY only (i.e., “2(f) in part as to TASTY”) since the term SNACKERS is inherently distinctive. The applicant must also disclaim the generic wording POTATO CHIPS.
Moreover, if the mark is TASTY POTATO CHIPS combined with an inherently distinctive design for potato chips and the applicant can show acquired distinctiveness as to the wording TASTY POTATO CHIPS, the applicant must limit the claim under §2(f) to the wording TASTY POTATO CHIPS only (i.e., “2(f) in part as to TASTY POTATO CHIPS”). The applicant must also disclaim the generic wording POTATO CHIPS.
Alternatively, if the mark is TASTY POTATO CHIPS combined with an inherently distinctive design for potato chips and the applicant can only show acquired distinctiveness as to TASTY (because the applicant had not previously used the entire wording TASTY POTATO CHIPS, for example), the applicant must limit the claim under §2(f) to the word TASTY only (i.e., “2(f) in part as to TASTY”). The applicant must also disclaim the generic wording POTATO CHIPS.
    1. Geographically Descriptive Matter Combined with an Inherently Distinctive Element


Claims of §2(f) in part are also appropriate when a mark is comprised of geographically descriptive matter combined with an inherently distinctive element, and the geographically descriptive matter presents a separate and distinct commercial impression apart from the other matter in the mark.




For example, if the mark is for car-cleaning preparations and the applicant, who is based in Texas, can show acquired distinctiveness as to the TEXAS design in the mark, the applicant must limit the claim under §2(f) to the TEXAS design only (i.e., “2(f) in part as to the design of the State of TEXAS”) since the term GOLD is inherently distinctive.


Similarly, if the mark is TEXAS combined with an inherently distinctive design element for car-cleaning preparations and the applicant, who is again from Texas, can show acquired distinctiveness as to the wording in the mark, the applicant must limit the §2(f) claim to §2(f) in part as to TEXAS only (i.e., “2(f) in part as to TEXAS”). 10
    1. Surname Combined with Generic Wording


A third appropriate situation for claiming §2(f) in part is for marks comprised of a surname combined with generic wording, and the applicant can only show acquired distinctiveness as to the surname.


For example, if the mark is JONES JEANS for pants and the applicant can only show acquired distinctiveness as to JONES (because the applicant had not previously used the entire wording JONES JEANS, for example), the applicant must limit the claim under §2(f) to the surname JONES only (i.e., “2(f) in part as to JONES”). The applicant must also disclaim the generic wording JEANS. However, this situation is rare, and the record must clearly reflect that the applicant can only show acquired distinctiveness as to the claimed portion of the mark. Note, by contrast, that if the applicant’s prior use is of the entire mark, JONES JEANS, a claim of §2(f) in part would be incorrect because the claim of acquired distinctiveness should apply to the entire mark. That is, in this example, the proper claim would be §2(f) as to JONES JEANS with a separate disclaimer of JEANS.11
    1. As an Alternative to a Disclaimer

A claim of §2(f) in part may be offered as an alternative to a disclaimer requirement, if it appears that the applicant can establish acquired distinctiveness in the relevant portion of the mark.


For example, if the mark is MOIST MORSELS combined with an inherently distinctive design for various food items, the applicant must enter a disclaimer of MOIST MORSELS or, if appropriate, a claim of §2(f) in part as to MOIST MORSELS.
Examining attorneys are not required to offer the applicant the §2(f) in part option when issuing a disclaimer requirement. However, it is not uncommon for an applicant to respond to a disclaimer requirement with a claim of §2(f) in part instead of the required disclaimer. Accordingly, be aware that this option may be appropriate.
  1. Inappropriate Situations for Claiming §2(f) in Part

    1. Claim Applies to Entire Mark

When a mark is comprised of merely descriptive matter, geographically descriptive matter, or a surname combined with generic matter, and the applicant has made a prima facie case of acquired distinctiveness, the applicant’s §2(f) claim should generally refer to the entire mark as used, with a separate disclaimer of any generic term(s).


For example, if the mark is NATIONAL CAR RENTAL for car-rental services and the applicant can show acquired distinctiveness as to the entire mark, the proper claim is §2(f) as to NATIONAL CAR RENTAL with a separate disclaimer of the generic wording CAR RENTAL. Similarly, if the mark is NATIONAL CAR RENTAL combined with an inherently distinctive design element, and the applicant can show acquired distinctiveness as to the entire wording, the proper §2(f) statement is §2(f) in part as to the wording NATIONAL CAR RENTAL with a separate disclaimer of CAR RENTAL. In these examples, it would be improper to limit the §2(f) statement to the word NATIONAL because the applicant is not claiming acquired distinctiveness as to NATIONAL, but rather as to the wording NATIONAL CAR RENTAL.
However, contrast these examples with the mark NATIONAL CAR RENTAL for the same services, where the applicant can only show acquired distinctiveness as to the word NATIONAL (because the applicant had not previously used the entire wording NATIONAL CAR RENTAL, for example). In this situation, the applicant may claim §2(f) in part as to NATIONAL and must separately disclaim CAR RENTAL. Similarly, if the mark is NATIONAL CAR RENTAL combined with an inherently distinctive design element, and the applicant can only show acquired distinctiveness as to the word NATIONAL, the proper §2(f) statement is §2(f) in part as to the word NATIONAL with a separate disclaimer of CAR RENTAL.12 As noted above, this situation is rare, and the record must clearly reflect that the applicant can only show acquired distinctiveness as to the claimed portion of the mark.
Note, if a §2(f) in part claim is improperly provided by the applicant when the record reflects that the §2(f) claim should apply to the entire mark, the examining attorney must issue a new requirement to correct the §2(f) claim.
    1. Inappropriate Alternative to a Disclaimer

In some situations, §2(f) in part is not an acceptable alternative to a disclaimer requirement. Specifically, if an applicant’s claim of distinctiveness applies to only part of a mark and the examining attorney determines (1) that the claimed portion of the mark is unregistrable (e.g., generic) and therefore the §2(f) claim is of no avail or (2) that, although the claimed portion is registrable, the applicant has failed to establish acquired distinctiveness, the examining attorney may require a disclaimer of that portion of the mark, assuming a disclaimer is otherwise appropriate.13


    1. Relying on a Claim of Ownership of a Prior Registration

In certain cases, an applicant may not rely on ownership of one or more prior registrations on the Principal Register of the relevant portion of the mark, for goods or services that are the same as or related to those named in the pending application, to support a claim of §2(f) in part. First, if the term for which the applicant seeks to prove distinctiveness was disclaimed in the claimed prior registration, the prior registration may not be accepted as prima facie evidence of acquired distinctiveness.14


For example, if the mark is TASTY SNACKERS for potato chips and the applicant attempts to rely on a prior registration for the mark TASTY combined with an inherently distinctive design, with TASTY disclaimed, for the same goods, to support its claim of acquired distinctiveness as to the descriptive word TASTY, such evidence would not be sufficient since the word TASTY was disclaimed in the prior registration. Absent additional evidence to show acquired distinctiveness as to TASTY, the examining attorney must require the applicant to delete the claim of §2(f) in part, and instead provide a disclaimer of the term TASTY.
Second, when an applicant is claiming §2(f) in part as to only a portion of its mark, the mark in the claimed prior registration must be the same as or the legal equivalent of the portion of the mark for which the applicant is claiming acquired distinctiveness.15 A mark is the legal equivalent of a portion of another mark if it creates the same, continuing commercial impression such that the consumer would consider the mark to be the same as the portion of the other mark.16
    1. §2(f) in Part vs. §2(f) Claim Restricted to Particular Goods, Services, or Classes

Please note that a claim of §2(f) in part should not be confused with a §2(f) claim restricted to certain classes in a multi-class application, or as to a portion of the goods/services within a single class. Such a restriction can be made regardless of whether the applicant is claiming §2(f) for the entire mark or §2(f) in part for a portion of the mark.17


IV. CLAIMING §2(f) IN PART IN §1(b), §44, OR §66(a) APPLICATIONS

  1. §1(b) Applications

A claim of distinctiveness under §2(f) is normally not filed in a §1(b) application before the applicant files an amendment to allege use or a statement of use, because a claim of acquired distinctiveness requires prior use.18 However, an intent-to-use applicant who has used the mark on related goods or services may claim acquired distinctiveness under §2(f) before filing an allegation of use, if the applicant can establish that, as a result of the applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins.19


Similarly, an intent-to-use applicant may assert a claim of acquired distinctiveness under §2(f) as to part of a mark prior to filing an acceptable allegation of use if the applicant has already used the relevant part of the mark in commerce on or in connection with the goods or services in the application, or related goods or services.20
The requirements to support such a claim are twofold. First, the applicant must establish acquired distinctiveness through the same methods required in a use-based application.21 Evidence in support of such a claim may consist of: (1) ownership of a prior registration on the Principal Register covering the relevant portion of the mark and the same or related goods or services;22 (2) a prima facie showing of distinctiveness based on five years’ use of the relevant portion of the mark with the same or related goods or services;23 or (3) actual evidence of acquired distinctiveness of the relevant portion of the mark with respect to the same or related goods or services.24
Second, if the relevant portion of the mark has been used with related, as opposed to identical, goods or services, the applicant must additionally show “the extent to which the goods or services in the intent-to-use application are related to the goods or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods or services when use in commerce occurs.”25 The showing necessary to establish relatedness varies from case to case depending on the nature of the goods or services, and in some cases may be self-evident from the identifications.26
  1. §44 and §66(a) Applications

In applications based on §44(d), §44(e), or §66(a), registration may be sought under §2(f) in part upon showing that the relevant part of the mark has acquired distinctiveness in commerce that may lawfully be regulated by Congress.27 The same standards for establishing acquired distinctiveness apply whether the application is based on §1(a), §44, or §66(a). Although dates of first use are not required in applications based solely on §44 or §66(a), reference to length of use in commerce or information as to specific dates of use in commerce, presented in support of the claim of acquired distinctiveness, is clearly relevant to a determination of the acceptability of the claim. Keep in mind that evidence of use solely in a foreign country, or between two foreign countries, is not evidence of acquired distinctiveness in the United States.28


V. §2(f) IN PART NOTATIONS, LIMITATION STATEMENTS, AND RESTRICTION STATEMENTS

When a mark is registered under §2(f), the USPTO prints a “2(f)” notation in the Official Gazette and on the certificate of registration. Therefore, when a claim of §2(f) in part is appropriate, the examining attorney must ensure that the record reflects that the §2(f) claim applies only to a portion of the mark and that the relevant portion is correctly identified in the limitation statement so that it will be printed in the Official Gazette and on the certificate of registration.29


For example, if the mark is SOFTSOAP combined with an inherently distinctive design for liquid soap and the applicant has successfully shown acquired distinctiveness as to the wording in the mark, the examining attorney must ensure that the “§2(f)” field in the TRAM database reads as follows before approving the mark for publication:


MISCELLANEOUS INFORMATION

SECTION 2F: NO

SECTION 2F IN PART: YES

2F Limitation Statement:

as to “SOFTSOAP”

Similarly, when a claim of §2(f) in part is restricted to particular goods, services, or classes, the examining attorney must ensure that the goods/services/classes to which the claim is restricted are clearly identified in the restriction statement of record.30




  • A proper restriction statement where the applicant is claiming §2(f) in part as to a particular class should be formatted to read as follows:

The §2(f) in part claim is restricted to class(es) <specify classes>; and to <specify which part of the mark>.”

  • A proper restriction statement where the applicant is claiming §2(f) in part as to a portion of the goods/services in a particular class should be formatted to read as follows:

The §2(f) in part claim is restricted to class(es) <specify classes> as to the <specify goods/services>; and to <specify which part of the mark>.”

Please note that the first part of these restriction statements is pre-populated in TRADEUPS under the restriction statement tab after selecting Section 2(f) in part.



1TMEP §1212.02(f)(i).

2See In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985); Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1578-79, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).

3TMEP §1212.02(f)(i).

4See 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

5See 37 C.F.R. §2.41(b ); TMEP §§1212.05 et seq.

6See 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.

7See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985).

8See TMEP §§1212.04(a), 1212.05(a), 1212.06.

9See TMEP §1212.02(f)(i).

10 For a common geographic term such as TEXAS, an applicant may face a greater burden for showing acquired distinctiveness. See TMEP §§1212.04(a), 1212.05(a), 1212.06.

11See Section III B., infra.

12 For a commonly used descriptive term such as NATIONAL, a higher threshold of evidence may be required to show acquired distinctiveness for services that are nationwide in scope. See TMEP §1209.03(o).

13See In re Lillian Vernon Corp., 225 USPQ 213 (TTAB 1985) (requirement for disclaimer of PROVENDER affirmed in application to register PROVENDER and design for “mail order services in the gourmet, bath and gift item field,” “provender” meaning “food” (claim of §2(f) distinctiveness in part held unacceptable)); TMEP §1212.02(f)(i); cf. In re Chopper Indus., 222 USPQ 258 (TTAB 1984) (requirement for disclaimer of CHOPPER reversed in application to register CHOPPER 1 and design for wood log splitting axes (claim of §2(f) distinctiveness in part held acceptable)).

14See Kellogg Co. v. General Mills, Inc., 82 USPQ2d 1766 (TTAB 2007); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004); TMEP §1212.04(a).

15TMEP §1212.04(b).

16See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.04(b). See also In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545 (TTAB 2010) (THE BOLLYWOOD REPORTER is not the legal equivalent of the registered marks THE HOLLYWOOD REPORTER, THEHOLLYWOODREPORTER.COM, and THE HOLLYWOOD REPORTER STUDIO BLU-BOOK); In re Binion, 93 USPQ2d 1531, (TTAB 2009) (BINION and BINION’S are not the legal equivalents of the registered marks JACK BINION and JACK BINION’S); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1477 (TTAB 1988) (“The words GOLDEN RING, while they are used to describe the device, are by no means identical to or substantially identical to the gold ring device trademark.”); In re Best Products Co., 231 USPQ 988, 989 n.6 (TTAB 1986) (“[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations, were deemed to be immaterial differences.”); In re Loew’s Theatres, Inc., 223 USPQ 513, 514 n.5 (TTAB 1984), aff’d, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (“We do not, however, agree with the Examining Attorney that a minor difference in the marks (i.e., here, merely that the mark of the existing registration is in plural form) is a proper basis for excluding any consideration of this evidence under the rule.”).

17See Section V, infra.

18See TMEP §1212.09(a).

19In re Dial-A-Mattress Operating Corp., 240 F.3d at 1347, 57 USPQ2d at 1812.

20See TMEP §1212.09(b).

21See Section II, supra.

22See TMEP §§1212.04 et seq.

23See TMEP §§1212.05 et seq.

24See TMEP §§1212.06 et seq.

25In re Rogers, 53 USPQ2d 1741, 1745 (TTAB 1999).

26See Kellogg Co. v. General Mills, Inc., 82 USPQ2d 1766 (TTAB 2007) (close relationship between cereal and food bars derived from cereal deemed “self evident from the respective identifications of goods”).

27See In re Etablissements Darty et Fils, 759 F.2d 15, 18, 225 USPQ 652, 654 (Fed. Cir. 1985); TMEP §1212.08.

28Rogers, 53 USPQ2d 1741.

29See TMEP §817 regarding preparation of an application for publication or issuance.

30See TMEP §1212.02(f)(ii).



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