1212.10 Printing §2(f) Notations, §2(f) in Part Notations, and Limitation Statements
Currently, 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. The examining attorney must ensure that the §2(f) claim has been entered into the TRAM database, so that it will be printed in the Official Gazette and on the certificate of registration. Similarly, 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. See TMEP §817 regarding preparation of an application for publication or registration.
For example, if the mark is SOFTSOAP for liquid soap and the applicant has successfully shown acquired distinctiveness, the examining attorney must ensure that the "§2(f)" field in the TRAM database reads as follows before approving the mark for publication:
Similarly, 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:
In the past, the USPTO did not print §2(f) notations. Therefore, the absence of a "§2(f)" notation on an older registration does not necessarily mean that the mark was registered without resort to §2(f).