1212.04 Prior Registrations as Proof of Distinctiveness
Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), provides that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register or under the Act of 1905. See TMEP §1212.04(b) as to what constitutes the "same mark," and TMEP §§1212.09–1212.09(b) concerning §1(b) applications.
The rule states that, "in appropriate cases," ownership of existing registrations to establish acquired distinctiveness "may be accepted as sufficient prima facie evidence of distinctiveness," but that the USPTO may, at its option, require additional evidence of distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985).
The following are general guidelines regarding claiming ownership of prior registrations as a method of establishing acquired distinctiveness.
1212.04(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark
The examining attorney has the discretion to determine whether the nature of the mark sought to be registered is such that a claim of ownership of an active prior registration for sufficiently similar goods or services is enough to establish acquired distinctiveness. For example, if the mark sought to be registered is deemed to be highly descriptive or misdescriptive of the goods or services named in the application, the examining attorney may require additional evidence of acquired distinctiveness. See In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985) (finding claim of ownership of a prior registration insufficient to establish acquired distinctiveness where registration was refused as primarily geographically deceptively misdescriptive).
If the term for which the applicant seeks to prove distinctiveness was disclaimed in the prior registration, the prior registration may not be accepted as prima facie evidence of acquired distinctiveness. 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).
1212.04(b) "Same Mark"
A proposed mark is the "same mark" as a previously registered mark for the purpose of 37 C.F.R. §2.41(a)(1) if it is the "legal equivalent" of such a mark. "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); see also In re Brouwerij Bosteels, 96 USPQ2d 1414, 1423 (TTAB 2010) (finding three-dimensional product packaging trade dress mark is not the legal equivalent of a two-dimensional design logo); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547-48 (TTAB 2010) (finding THE BOLLYWOOD REPORTER is not the legal equivalent of the registered marks THE HOLLYWOOD REPORTER, THEHOLLYWOODREPORTER.COM, and THE HOLLYWOOD REPORTER STUDIO BLU-BOOK); In re Binion, 93 USPQ2d 1531, 1539 (TTAB 2009) (finding BINION and BINION’S are not the legal equivalents of the registered marks JACK BINION and JACK BINION’S); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1477 (TTAB 1988) ("The words GOLDEN RING, while they are used to describe the device, are by no means identical to or substantially identical to the gold ring device trademark."); In re Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) ("[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations, were deemed to be immaterial differences."); In re Loew’s Theatres, Inc., 223 USPQ 513, 514 n.5 (TTAB 1984) , aff’d, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) ("We do not, however, agree with the Examining Attorney that a minor difference in the marks (i.e., here, merely that the mark of the existing registration is in plural form) is a proper basis for excluding any consideration of this evidence under the rule."); In re Flex-O-Glass, Inc., 194 USPQ 203, 205-06 (TTAB 1977) ("[P]ersons exposed to applicant’s registered mark . . . would, upon encountering [applicant’s yellow rectangle and red circle design] . . ., be likely to accept it as the same mark or as an inconsequential modification or modernization thereof . . . . [A]pplicant may ‘tack on’ to its use of the mark in question, the use of the registered mark . . . and therefore may properly rely upon its registration in support of its claim of distinctiveness herein.").
See, e.g., Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991) regarding the concept of "tacking" with reference to prior use of a legally equivalent mark.
When an applicant is claiming §2(f) as to only a portion of its mark, then the previously registered mark must be the legal equivalent of the relevant portion for which the applicant is claiming acquired distinctiveness. See TMEP §1212.02(f) regarding claims of acquired distinctiveness as to a portion of a mark.
1212.04(c) Goods or Services Must be "Sufficiently Similar"
The examining attorney must determine whether the goods or services identified in the application are "sufficiently similar" to the goods or services identified in the active prior registration(s). See 37 C.F.R. §2.41(a)(1). If the similarity or relatedness is self-evident, the examining attorney may generally accept the §2(f) claim without additional evidence. This is most likely to occur with ordinary consumer goods or services where the nature and function or purpose of the goods or services is commonly known and readily apparent (e.g., a prior registration for hair shampoo and new application for hair conditioner).
If the similarity or relatedness of the goods or services in the application and prior registration(s) is not self-evident, the examining attorney may not accept the §2(f) claim without evidence and an explanation demonstrating the purported similarity or relatedness between the goods or services. This is likely to occur with industrial goods or services where there may in fact be a high degree of similarity or relatedness, but it would not be obvious to someone who is not an expert in the field. See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1478 (TTAB 1988) ("Applicant’s almost total reliance on the distinctiveness which its gold ring device has achieved vis-à-vis rifle scopes and handgun scopes is simply not sufficient by itself to establish that the same gold ring device has become distinctive vis-à-vis binoculars and spotting scopes."); In re Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) ("[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations [‘mail order and catalog showroom services’ and ‘retail jewelry store services’], were deemed to be immaterial differences."); In re Owens-Illinois Glass Co., 143 USPQ 431, 432 (TTAB 1964) (holding applicant’s ownership of prior registration of LIBBEY for cut-glass articles acceptable as prima facie evidence of distinctiveness of identical mark for plastic tableware, the Board stated, "Cut-glass and plastic articles of tableware are customarily sold in the same retail outlets, and purchasers of one kind of tableware might well be prospective purchasers of the other."); In re Lytle Eng'g & Mfg. Co., 125 USPQ 308, 309 (TTAB 1960) (holding applicant’s ownership of prior registration of LYTLE for various services, including the planning, preparation, and production of technical publications, acceptable as prima facie evidence of distinctiveness of identical mark for brochures, catalogs, and bulletins).
1212.04(d) Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905
Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), states that ownership of an active prior registration "on the Principal Register or under the Act of 1905" may be accepted as prima facie evidence of distinctiveness. Therefore, claims of acquired distinctiveness under §2(f) may not be based on ownership of registrations on the Supplemental Register. See In re Canron, Inc., 219 USPQ 820, 822n.2 (TTAB 1983).
Additionally, a claim of acquired distinctiveness may not be based on a registration that is cancelled or expired. See 37 C.F.R. §2.41(a)(1); In re BankAmerica Corp., 229 USPQ 852, 853 (TTAB 1986) . When an examining attorney considers a §2(f) claim based on ownership of one or more prior registrations, the examining attorney must confirm, in the records of the USPTO, that the claimed registrations were issued on the Principal Register or under the Act of 1905 and that they are in full force and effect.
1212.04(e) Form of §2(f) Claim Based on Ownership of Prior Registrations
The following language may be used to claim distinctiveness under §2(f) for a trademark or service mark on the basis of ownership of one or more prior registrations:
The mark has become distinctive of the goods and/or services as evidenced by ownership of active U.S. Registration No(s). __________ on the Principal Register for the same mark for sufficiently similar goods and/or services.
If the applicant is relying solely on its ownership of one or more active prior registrations as proof of acquired distinctiveness, the §2(f) claim does not have to be verified. Therefore, an applicant or an applicant’s attorney may authorize amendment of an application to add such a claim through an examiner’s amendment, if otherwise appropriate.