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).