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 Trademark 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 Trademark 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 Trademark database reads as follows before approving the mark for publication:
If the applicant has successfully shown acquired distinctiveness as to non-English wording in the mark, or as to non-English wording that has been transliterated from non-Latin characters, the examining attorney must ensure that the §2(f) claim is entered as shown in the following examples.
If the mark is KONE UNIPOWER for machine parts, the term KONE means "machine or engine," and the applicant has successfully shown acquired distinctiveness as to the term KONE, the examining attorney must ensure that the "§2(f)" field in the Trademark database reads as follows before approving the mark for publication:
Similarly, in the mark shown below, where the non-Latin characters transliterate to "ME-RI-LAND-HAN-IN-SI-MIN-HYUP-IIOY," which means
"MARYLAND, KOREAN AMERICAN LEAGUE," and the mark is used for organizing and conducting community service projects and programs to promote cultural and social awareness, if the applicant has successfully shown acquired distinctiveness as to the portion of the mark comprised of the non-Latin characters, the examining attorney must ensure that the "§2(f)" field in the Trademark database reads as follows before approving the mark for publication:
In the past, the USPTO did not print §2(f) notations on the registration. Therefore, the absence of a "§2(f)" notation on an older registration does not necessarily mean that the mark was registered without a §2(f) claim.