1212.02 General Procedural Matters
1212.02(a) Situations in Which a Claim of Distinctiveness under §2(f) Is Appropriate
A claim of distinctiveness by the applicant under §2(f) is usually made either in response to a statutory refusal to register or in anticipation of such a refusal. See TMEP §714.05(a)(i). A claim of distinctiveness is appropriately made in response to, or in anticipation of, only certain statutory refusals to register. For example, it is inappropriate to assert acquired distinctiveness to contravene a refusal under §§2(a), (b), (c), (d), or (e)(5), 15 U.S.C. §§1052(a), (b), (c), (d), or (e)(5). Furthermore, acquired distinctiveness may not be asserted to contravene a refusal under §2(e)(3), 15 U.S.C. §1052(e)(3), unless the mark became distinctive of the applicant’s goods in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act (see TMEP §1210.07(b))). See TMEP §§1210.05(d)–1210.05(d)(ii) regarding procedures for refusing registration under §2(a) in response to a claim that a geographically deceptive mark acquired distinctiveness prior to December 8, 1993.
In In re Soccer Sport Supply Co., 507 F.2d 1400, 1403 n.3, 184 USPQ 345, 348 n.3 (C.C.P.A. 1975), the Court of Customs and Patent Appeals noted as follows:
[T]he judicially developed concept of "secondary meaning," codified by section 2(f) (15 U.S.C. 1052(f)), relates to descriptive, geographically descriptive, or surname marks which earlier had a primary meaning which did not indicate a single source and were, therefore, unregistrable because of section 2(e) (citation omitted). Additionally, section 2(f) has been applied to permit registration of a mark consisting solely of a design and, therefore, not within the purview of section 2(e).
1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession That Matter Is Not Inherently Distinctive
For procedural purposes, a claim of distinctiveness under §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as conceding that the matter to which it pertains is not inherently distinctive and, thus, not registrable on the Principal Register absent proof of acquired distinctiveness. See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) ("Where an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive."). For the purposes of establishing that the subject matter is not inherently distinctive, the examining attorney may rely on this concession alone. Once an applicant has claimed that matter has acquired distinctiveness under §2(f), the issue to be determined is not whether the matter is inherently distinctive but, rather, whether it has acquired distinctiveness.
See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co. , 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re Prof'l Learning Ctrs., Inc., 230 USPQ 70, 71 (TTAB 1986); In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984).
However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP §1212.02(c).
See TMEP §1212.02(d) regarding unnecessary §2(f) claims.
1212.02(c) Claiming §2(f) Distinctiveness in the Alternative
An applicant may argue the merits of an examining attorney’s refusal and, in the alternative, claim that the matter sought to be registered has acquired distinctiveness under §2(f). Unlike the situation in which an applicant initially seeks registration under §2(f) or amends its application without objection, the alternative claim does not constitute a concession that the matter sought to be registered is not inherently distinctive. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992); In re Prof'l Learning Ctrs., Inc., 230 USPQ 70, 71 n.2 (TTAB 1986).
When an applicant claims acquired distinctiveness in the alternative, the examining attorney must treat separately the questions of: (1) the underlying basis of refusal; and (2) assuming the matter is determined to be registrable, whether acquired distinctiveness has been established. If the applicant has one or more prior registrations under §2(f) for a different depiction of the same mark (e.g., stylized vs. standard character) or a portion of the proposed mark, and for the same goods/services, the examining attorney’s review of the records of the registrations would reveal whether the applicant previously conceded descriptiveness or whether the Board found the mark descriptive on appeal. See Thomas Nelson, 97 USPQ2d at 1713. Such an assessment of the probative value of the prior registrations might also assist in resolving whether the mark in question has acquired distinctiveness, thereby obviating the necessity of determining that issue on appeal as well. Id.
In the event of an appeal on both grounds, the Board will use the same analysis, provided the evidence supporting the §2(f) claim is in the record and the alternative grounds have been considered and finally decided by the examining attorney. In re Harrington, 219 USPQ 854, 855 n.1 (TTAB 1983). If the appeal results in a finding of descriptiveness, and also that the mark has acquired distinctiveness, then descriptiveness would be present, even though not conceded by the applicant. Thomas Nelson, 97 USPQ2d at 1713.
If the examining attorney accepts the §2(f) evidence, the applicant must be given the option of publication under §2(f) or going forward with the appeal on the underlying refusal. This should be done by telephone or e-mail, with a Note to the File in the record indicating the applicant’s decision, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or e-mail, the examining attorney must issue a written action continuing the underlying refusal and noting that the §2(f) evidence is deemed acceptable and will not be an issue on appeal.
Similarly, in an application under §1 or §44 of the Trademark Act, the applicant may seek registration on the Principal Register under §2(f) and, in the alternative, on the Supplemental Register. Depending on the facts of the case, this approach may have limited practical application. If the examining attorney finds that the matter sought to be registered is not a mark within the meaning of §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127 (e.g., is generic or purely ornamental), the examining attorney will refuse registration on both registers.
However, if the issues are framed in the alternative (i.e., whether the matter sought to be registered has acquired distinctiveness under §2(f) or, in the alternative, whether it is capable of registration on the Supplemental Register), and it is ultimately determined that the matter is a mark within the meaning of the Act (e.g., that the matter is merely descriptive rather than generic), then the evidence of secondary meaning will be considered. If it is determined that the applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness, the application will be approved for publication on the Principal Register under §2(f). If the evidence is determined to be insufficient, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
Accordingly, the applicant may submit an amendment to the Supplemental Register, and continue to argue entitlement to registration on the Principal Register in an appeal.
If the applicant files a notice of appeal in such a case, the Board will institute the appeal, suspend action on the appeal and remand the application to the examining attorney to determine registrability on the Supplemental Register.
If the examining attorney determines that the applicant is entitled to registration on the Supplemental Register, the examining attorney must send a letter notifying the applicant of the acceptance of the amendment and telling the applicant that the application is being referred to the Board for resumption of the appeal. If the examining attorney determines that the applicant is not entitled to registration on the Supplemental Register, the examining attorney will issue a nonfinal action refusing registration on the Supplemental Register. If the applicant fails to overcome the refusal, the examining attorney will issue a final action, and refer the application to the Board to resume action on the appeal with respect to entitlement to registration on either the Principal or the Supplemental Register.
Rather than framing the issues in the alternative (i.e., whether the matter has acquired distinctiveness pursuant to §2(f) or, in the alternative, whether it is capable of registration on the Supplemental Register), the applicant may amend its application between the Principal and Supplemental Registers. 37 C.F.R. §2.75. See In re Educ. Commc'ns, Inc., 231 USPQ 787, 787 (TTAB 1986); In re Broco, 225 USPQ 227, 228 (TTAB 1984).
See TMEP §§816–816.05 and 1102.03 regarding amending an application to the Supplemental Register, and TBMP §1215 regarding alternative positions on appeal.
1212.02(d) Unnecessary §2(f) Claims
If the applicant specifically requests registration under §2(f), but the examining attorney considers the entire mark to be inherently distinctive and the claim of acquired distinctiveness to be unnecessary, the examining attorney must so inform the applicant and inquire whether the applicant wishes to delete the statement or to rely on it.
In this situation, if it is necessary to issue an Office action about another matter, the examining attorney must state in the Office action that the §2(f) claim appears to be unnecessary, and inquire as to whether the applicant wants to withdraw it. If it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or e-mail. If the applicant wants to delete the §2(f) claim, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or e-mail message (applicant must be given at least a week), the examining attorney must enter a Note to the File in the record and approve the application for publication without deleting the §2(f) claim.
If the applicant specifically requests registration of the entire mark under §2(f), but the examining attorney believes that part of the mark is inherently distinctive, the examining attorney should give the applicant the option of limiting the §2(f) claim to the matter that is not inherently distinctive, if otherwise appropriate. See TMEP §1212.02(f) regarding claims of §2(f) distinctiveness as to a portion of a mark. However, if the applicant wishes, a claim of acquired distinctiveness under §2(f) may be made as to an entire mark or phrase that contains both inherently distinctive matter and matter that is not inherently distinctive. In re Del E. Webb Corp., 16 USPQ2d 1232, 1234 (TTAB 1990).
If the application contains statements that seem to relate to acquired distinctiveness or §2(f) but do not actually amount to a request for registration under §2(f), and the examining attorney does not believe that resorting to §2(f) is necessary, the examining attorney may treat the statements as surplusage. If it is necessary to communicate with the applicant about another matter, the examining attorney should inform the applicant that the statements are being treated as surplusage. If it is otherwise unnecessary to communicate with the applicant, the examining attorney should delete the statements from the Trademark database, enter a Note to the File in the record indicating that this has been done, and approve the application for publication. The documents containing the surplusage will remain in the record, but a §2(f) claim will not be printed in the Official Gazette or on the certificate of registration. See TMEP §817 regarding preparation of applications for publication or issuance.
1212.02(e) Disclaimers in Applications Claiming Distinctiveness under §2(f)
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), states, in part, "The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." See In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[W]e conclude that it is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").
1212.02(f) Section 2(f) Claim in Part
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.
1212.02(f)(ii) 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. 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 appropriate, the applicant can claim §2(f) as to the entire unitary mark.
See TMEP §1212.09(b) regarding claims of §2(f) in part in §1(b) applications, and TMEP §1212.08 regarding claims of §2(f) in part in §44 and §66a applications.
See also §1212.10 for information on printing §2(f) in part notations and limitation statements.
1212.02(f)(ii)(A) Appropriate Situations for Claiming §2(f) in Part
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 (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 (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 a 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 (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 (e.g., because the applicant had not previously used the entire wording TASTY POTATO CHIPS), the applicant must limit the claim under §2(f) to the word TASTY (i.e., "2(f) in part as to TASTY"). The applicant must also disclaim the generic wording POTATO CHIPS.
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 TEXAS GOLD for car-cleaning preparations and the applicant, who is based in Texas, can show acquired distinctiveness as to TEXAS, the applicant must limit the claim under §2(f) to the word TEXAS only (i.e., "2(f) in part as to 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 claim under §2(f) to the word TEXAS only (i.e., "2(f) in part as to TEXAS").
See TMEP §1210.07(b) for further information regarding the registrability of geographic terms under §2(f) in part.
Surname Combined with Generic Wording
Applicants may also claim §2(f) in part for marks comprised of a surname combined with generic wording, when the applicant can show acquired distinctiveness only 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.
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 option of claiming §2(f) in part 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, and this option may be offered in the first Office action, if appropriate.
1212.02(f)(ii)(B) Inappropriate Situations for Claiming §2(f) in Part
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, if the applicant can show acquired distinctiveness only as to the word NATIONAL (e.g., because the applicant had not previously used the entire wording NATIONAL CAR RENTAL), 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 show acquired distinctiveness only 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. As noted above, this situation is rare, and the record must clearly reflect that the applicant can show acquired distinctiveness only as to the claimed portion of the mark.
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.
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 that (1) the claimed portion of the mark is unregistrable (e.g., generic) and therefore the §2(f) claim is of no avail or (2) 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. See In re Lillian Vernon Corp., 225 USPQ 213 (TTAB 1985) (affirming requirement for disclaimer of PROVENDER 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)); cf. In re Chopper Indus., 222 USPQ 258 (TTAB 1984) (reversing requirement for disclaimer of CHOPPER in application to register CHOPPER 1 and design for wood log splitting axes (claim of §2(f) distinctiveness in part held acceptable)).
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. See Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 n.5 (TTAB 2007); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1889-90 (TTAB 2004); TMEP §1212.04(a). 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. 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. See TMEP §1212.04(b) and cases cited therein.
§2(f) in Part versus §2(f) Claim Restricted to Particular Goods, Services, or Classes
A claim of §2(f) in part should not be confused with a §2(f) claim restricted to certain classes in a multiple-class application or 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. See TMEP §1212.02(j).
1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or Appropriate Kind/Amount of Evidence
In a first action refusing registration, the examining attorney should suggest, where appropriate, that the applicant amend its application to seek registration under §2(f). For example, this should be done as a matter of course, if otherwise appropriate, in cases where registration is refused under §2(e)(4) on the ground that the mark is primarily merely a surname, and the applicant has recited dates of use that indicate that the mark has been in use in commerce for at least five years.
If the examining attorney determines that an applicant’s evidence is insufficient to establish that the mark has acquired distinctiveness, the examining attorney should suggest, where appropriate, that the applicant submit additional evidence. See In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 220 n.2 (TTAB 1984) (Noting that applicant was specifically invited to seek registration pursuant to §2(f) but, after amending its application to do so, was refused registration on the ground that the mark was incapable of acquiring distinctiveness, the Board stated that, in fairness to applicant, this practice should be avoided where possible).
The examining attorney should not "require" that the applicant submit evidence of secondary meaning. There would be no practical standard for a proper response to this requirement, nor would there be a sound basis for appeal from the requirement. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983) ("Section 2(f) is not a provision on which registration can be refused.").
The examining attorney should not specify the kind or the amount of evidence sufficient to establish that a mark has acquired distinctiveness. It is the responsibility of the applicant to submit evidence to establish that the mark has acquired distinctiveness. See TMEP §1212.01. However, the examining attorney may make a suggestion as to a course of action, if the examining attorney believes this would further the prosecution of the application.
1212.02(h) Nonfinal and Final Refusals
If an application is filed under §2(f) of the Trademark Act and the examining attorney determines that (1) the mark is not inherently distinctive, and (2) the applicant’s evidence of secondary meaning is insufficient to establish that the mark has acquired distinctiveness, the examining attorney will issue a nonfinal action refusing registration on the Principal Register pursuant to the appropriate section of the Trademark Act (e.g., §2(e)(1)), and will separately explain why the applicant’s evidence of secondary meaning is insufficient to overcome the underlying statutory basis for refusal. The examining attorney should suggest, where appropriate, that the applicant submit additional evidence. See TMEP §1212.02(g) concerning the examining attorney’s role in suggesting a claim of distinctiveness under §2(f).
If an application is not filed under §2(f) and the examining attorney determines that the mark is not inherently distinctive, the examining attorney will issue a nonfinal action refusing registration on the Principal Register under the appropriate section of the Act (e.g., §2(e)(1)). The examining attorney should suggest, where appropriate, that the applicant amend its application to claim distinctiveness under §2(f).
Thereafter, if the applicant amends its application to seek registration under §2(f), a new issue is raised as to the sufficiency of the applicant’s evidence of secondary meaning (see TMEP §714.05(a)(i)). The underlying statutory basis for refusal remains the same (i.e., §2(e)(1)), but the issue changes from whether the underlying refusal is warranted to whether the matter has acquired distinctiveness. If the examining attorney is persuaded that a prima facie case of acquired distinctiveness has been established, the examining attorney will approve the application for publication under §2(f). If the examining attorney determines that the applicant’s evidence is insufficient to establish that the matter has acquired distinctiveness, the examining attorney will issue a second nonfinal action repeating the underlying statutory basis for refusal (e.g., §2(e)(1)), and explaining why the applicant’s evidence is insufficient to overcome the stated refusal.
The examining attorney cannot issue a final refusal on the underlying statutory basis of the original refusal, upon an applicant’s initial assertion of a §2(f) claim. The mere assertion of distinctiveness under §2(f) raises a new issue. See In re Educ. Commc’ns, Inc., 231 USPQ 787, 787 n.2 (TTAB 1986). Even if the applicant has submitted, in support of the §2(f) claim, a statement of five years’ use that is technically defective (e.g., not verified or comprising incorrect language), the assertion of §2(f) distinctiveness still constitutes a new issue.
Exception: The examining attorney may issue a final refusal upon an applicant’s initial assertion of a §2(f) claim if the amendment is irrelevant to the outstanding refusal. See TMEP §714.05(a)(i). See also TMEP §§1212.02(a) and 1212.02(i) regarding situations where it is and is not appropriate to submit a claim of acquired distinctiveness to overcome a refusal.
After the examining attorney has issued a nonfinal action refusing registration on the Principal Register with a finding that the applicant’s evidence of secondary meaning is insufficient to overcome the stated refusal, the applicant may elect to submit additional arguments and/or evidence regarding secondary meaning. If, after considering this submission, the examining attorney is persuaded that the applicant has established a prima facie case of acquired distinctiveness, the examining attorney will approve the application for publication under §2(f). If the examining attorney is not persuaded that the applicant has established a prima facie case of acquired distinctiveness, and the application is otherwise in condition for final refusal, the examining attorney will issue a final refusal pursuant to the appropriate section of the Act (e.g., §2(e)(1)), with a finding that the applicant’s evidence of acquired distinctiveness is insufficient to overcome the stated refusal. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983).
In any action in which the examining attorney indicates that the evidence of record is insufficient to establish that the mark has acquired distinctiveness, the examining attorney must specify the reasons for this determination. See In re Interstate Folding Box Co., 167 USPQ 241, 243 (TTAB 1970); In re H. A. Friend & Co., 158 USPQ 609, 610 (TTAB 1968).
1212.02(i) Section 2(f) Claim with Respect to Incapable Matter
If matter is generic, functional, or purely ornamental, or otherwise fails to function as a mark, the matter is unregistrable. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) ("If a mark is generic, incapable of serving as a means ‘by which the goods of the applicant may be distinguished from the goods of others’ ... it is not a trademark and can not be registered under the Lanham Act."); H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), and cases cited therein ("A generic term ... can never be registered as a trademark because such a term is ‘merely descriptive’ within the meaning of §2(e)(1) and is incapable of acquiring de jure distinctiveness under §2(f). The generic name of a thing is in fact the ultimate in descriptiveness."); see also In re Melville Corp., 228 USPQ 970, 972 (TTAB 1986) (finding BRAND NAMES FOR LESS, for retail store services in the clothing field, "should remain available for other persons or firms to use to describe the nature of their competitive services.").
It is axiomatic that matter may not be registered unless it is used as a mark, namely, "in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods in question." In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987). See, e.g., In re Melville Corp., 228 USPQ at 971 n.2 ("If matter proposed for registration does not function as a mark, it is not registrable in accordance with Sections 1 and 2 of the Act because the preambles of those sections limit registration to subject matter within the definition of a trademark."); In re Whataburger Sys., Inc., 209 USPQ 429, 430 (TTAB 1980) ("[A] designation may not be registered either as a trademark or as a service mark unless it is used as a mark, in such a manner that its function as an indication of origin may be readily perceived by persons encountering the goods or services in connection with which it is used.").
Therefore, where the examining attorney has determined that matter sought to be registered is not registrable because it is not a mark within the meaning of the Trademark Act, a claim that the matter has acquired distinctiveness under §2(f) as applied to the applicant’s goods or services does not overcome the refusal. See, e.g., TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001) ("Functionality having been established, whether MDI’S dual spring design has acquired secondary meaning need not be considered."); In re R.M. Smith, Inc., 734 F.2d 1482, 1484-85, 222 USPQ 1, 3 (Fed. Cir. 1984) ("Evidence of distinctiveness is of no avail to counter a de jure functionality rejection."); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1554 (TTAB 2009) (stating that a product design may become generic and, thus, cannot be registered, regardless of applicant’s claim of acquired distinctiveness); In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984) ("Long use of a slogan which is not a trademark and would not be so perceived does not, of course, transform the slogan into a trademark."); In re Mancino, 219 USPQ 1047, 1048 (TTAB 1983) ("Since the refusal ... was based on applicant’s failure to demonstrate technical service mark use, the claim of distinctiveness under Section 2(f) was of no relevance to the issue in the case.").
As discussed above, evidence of acquired distinctiveness will not alter the determination that matter is unregistrable. However, the examining attorney must review the evidence and make a separate, alternative, determination as to whether, if the proposed mark is ultimately determined to be capable, the applicant’s evidence is sufficient to establish acquired distinctiveness. This will provide a more complete record in the event that the applicant appeals and prevails on the underlying refusal. The examining attorney must also consider whether the applicant’s evidence has any bearing on the underlying refusal. See TMEP §§1209.02–1209.02(b) regarding the procedure for descriptiveness and/or generic refusals.
If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found to be capable. Cf. In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be nonfunctional.
See also In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (finding applicant’s evidence relating to public perception of WHY PAY MORE! entitled to relatively little weight, noting that the evidence is relevant to the issue of whether the slogan functions as a mark for applicant’s supermarket services).
1212.02(j) Section 2(f) Claim Restricted to Particular Goods/Services/Classes
An applicant may claim acquired distinctiveness as to certain classes in a multiple-class application, or as to only a portion of the goods/services within a single class. The applicant must clearly identify the goods/services/classes for which distinctiveness is claimed. The standards for establishing acquired distinctiveness are the same whether the claim of distinctiveness pertains to all or to only a portion of the goods/services.
If the examining attorney determines that a claim of distinctiveness as to a portion of the goods/services/classes is appropriate, the examining attorney must ensure that the "§2(f)" field in the Trademark database indicates that the §2(f) claim is restricted to certain goods/services/classes, and that those goods/services/classes are clearly identified in the restriction statement of record in the USPTO database. See the following example, where the applicant is claiming §2(f) for the entire mark, but only as to a portion of the goods/services:
See also the following example, where the applicant is claiming §2(f) in part (not as to the entire mark), restricted to a portion of the goods/services:
A separate limitation statement is also required for claims of §2(f) in part. See TMEP §1212.10.