1212.02(f)(i) Standards for Establishing Acquired Distinctiveness for Claims of §2(f) in Part
A claim of acquired distinctiveness may apply to a portion of a mark (a claim of §2(f) "in part"). The standards for establishing acquired distinctiveness are the same whether a claim of distinctiveness pertains to the entire mark or a portion of it. However, examining attorneys must focus their 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 (see 37 C.F.R. §2.41(b); TMEP §§1212.04–1212.04(e));
- (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 (see 37 C.F.R. §2.41(b); TMEP §§1212.05–1212.05(d)); or
- (3) Actual evidence of acquired distinctiveness of the relevant portion of the mark (see 37 C.F.R. §2.41(a); TMEP §§1212.06–1212.06(e)(iv)).
As with all claims of acquired distinctiveness, the amount and character of evidence required depends on the facts of each case and the nature of the mark sought to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB 1985); TMEP §1212.01. 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. See TMEP §§1212.04(a), 1212.05(a), and 1212.06.