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 for a trademark or service mark:

  • (1) Prior Registrations: A claim of ownership of one or more active prior registrations on the Principal Register of the relevant portion of the mark for goods or services that are sufficiently similar to those identified in the pending application (see 37 C.F.R. §2.41(a)(1); TMEP §§1212.04–1212.04(e));
  • (2) Five Years’ Use: A verified statement that the relevant portion of the mark has become distinctive of the applicant’s goods or services by reason of the applicant's substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made (see 37 C.F.R. §2.41(a)(2); TMEP §§1212.05–1212.05(d)); or
  • (3) Other Evidence: Other appropriate evidence of acquired distinctiveness of the relevant portion of the mark (see 37 C.F.R. §2.41(a)(3); TMEP §§1212.06–1212.06(e)(iv)).

These three basic types of evidence apply similarly to collective trademarks, collective service marks, and collective membership marks (together "collective marks"), and certification marks, with slight modifications regarding the type of evidence required due to (1) the different function and purpose of collective and certification marks and (2) the fact that these types of marks are used by someone other than the applicant. See 37 C.F.R. §2.41(b)-(d).

  • (1) Prior Registrations: A claim of ownership of one or more active prior registrations on the Principal Register of the relevant portion of the mark for: goods or services that are sufficiently similar to those identified in the pending application, for a collective trademark or collective service mark (37 C.F.R. §2.41(b)(1); cf. TMEP §§1212.04–1212.04(e)); goods, services, or nature of the collective membership organization that are sufficiently similar to those identified in the pending application, for a collective membership mark (37 C.F.R. §2.41(c)(1); cf. TMEP §§1212.04–1212.04(e)); or goods or services that are sufficiently similar to the goods or services certified in the pending application, for a certification mark (37 C.F.R. §2.41(d)(1); cf. TMEP §§1212.04–1212.04(e));
  • (2) Five Years’ Use: A verified statement that the relevant portion of the mark has become distinctive of: the members’ goods or services by reason of the members’ substantially exclusive and continuous use of the relevant portion of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, for a collective trademark or collective service mark (37 C.F.R. §2.41(b)(2); TMEP §1212.05(d)); indicating membership in the applicant’s collective organization by reason of the members’ substantially exclusive and continuous use of the relevant portion of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, for a collective membership organization (37 C.F.R. §2.41(c)(2); TMEP §1212.05(d)); or the certified goods or services, by reason of the authorized users’ substantially exclusive and continuous use of the relevant portion of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, for a certification mark (37 C.F.R. §2.41(d)(2); TMEP §1212.05(d)); and
  • (3) Other Evidence: Other appropriate evidence of acquired distinctiveness of the relevant portion of the mark (37 C.F.R. §2.41(b)(3), (c)(3), (d)(3); cf. TMEP §§1212.06–1212.06(e)(iv)).

The applicant may submit one or any combination of these types of evidence. Depending on the nature of the relevant portion of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness in part.

The amount and character of evidence required typically depends on the facts of each case and the nature of the relevant portion 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. A determination regarding the acceptability of a §2(f) claim depends on the nature of the relevant portion of the mark and/or the nature and sufficiency of the evidence provided by the applicant. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (finding that applicant’s evidence of prior registrations did not establish that the specific wording at issue had acquired distinctiveness); TMEP §§1212.04(a), 1212.05(a), 1212.06.

The legal principles pertaining to evidence of acquired distinctiveness in part discussed below with respect to trademarks and service marks apply generally to collective marks and certification marks as well.

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 §66(a) applications.

See also TMEP §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 is appropriate when descriptive matter that is combined with an inherently distinctive element, such as arbitrary words or an inherently distinctive design, presents a separate and distinct commercial impression apart from the other matter in the mark and has acquired distinctiveness through use by itself.

For example, if the mark is TASTY SNACKARAMA for potato chips and the applicant can show acquired distinctiveness as to the descriptive word TASTY by itself, 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 SNACKARAMA is inherently distinctive.

Similarly, if the mark is TASTY SNACKARAMA POTATO CHIPS for potato chips and the applicant can show acquired distinctiveness as to TASTY by itself, 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 SNACKARAMA is inherently distinctive. The applicant must also disclaim the generic wording POTATO CHIPS.

If the mark is TASTY POTATO CHIPS combined with an inherently distinctive design for potato chips and the applicant can show acquired distinctiveness as to the wording TASTY POTATO CHIPS by itself, 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. See In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018) ("While a generic term standing alone certainly cannot acquire distinctiveness . . . the generic term may be included in the claim of acquired distinctiveness as long as an accompanying disclaimer of the generic term is provided.").

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 and has acquired distinctiveness through use by itself.

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 by itself, 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").

An applicant may claim §2(f) in part as to wording consisting of both geographically descriptive matter and generic matter if the applicant establishes that the combined wording as a whole has acquired distinctiveness and provides a disclaimer of the generic matter. See In re Am. Furniture Warehouse CO, 126 USPQ2d at 1407-08 (TTAB 2018) (accepting a §2(f)-in-part claim as to AMERICAN FURNITURE WAREHOUSE, provided that applicant disclaimed FURNITURE WAREHOUSE).

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. Any generic matter included in such a claim must still be disclaimed. See In re Am. Furniture Warehouse CO, 126 USPQ2d at 1407-08.

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 or otherwise unregistrable component. See In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018) ("[A] generic term may be included in the claim of acquired distinctiveness as long as an accompanying disclaimer of the generic term is provided."). See TMEP §1212.02(f)(ii)(A) regarding including generic matter in §2(f)-in-part claims.

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. 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, or vice versa, the examining attorney must issue a new requirement to correct the §2(f) claim. See TMEP §§1212.05(d) and 1212.07 regarding verification of amended §2(f) claims based on five years’ use.

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 SNACKARAMA 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).