T.M.E.P. § 1212.02
General Procedural Matters

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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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. 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)).

In In re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 1403 n.3, 184 USPQ 345, 347 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). 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. Ltd., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 (TTAB 1986); In re Chopper Industries, 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).

For the purposes of establishing that the subject matter is not inherently distinctive, the examining attorney should not rely on this concession alone, but should rely on other appropriate evidence.

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 E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 n.2 (TTAB 1986).

When an applicant claims acquired distinctiveness in the alternative, the examining attorney should 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. In the event of an appeal, 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).

In In re Capital Formation Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983), the Board outlined its procedure in situations where the applicant maintains the position that the underlying refusal is improper and alternatively seeks registration pursuant to §2(f) in the interest of advancing the prosecution of the application:

If we decide that the mark as applied to the services is arbitrary or suggestive of the services, as applicant claims, we must reverse the refusal of registration under Section 2(e)(1) and we need not consider any of the affidavits or other material made of record by applicant in support of its Section 2(f) claim of distinctiveness. If, on the other hand, we find the mark to be merely descriptive of the services and, in fact, so highly descriptive of them that no amount of evidence could persuade us that the mark has become distinctive, we must affirm the refusal of registration. Similarly, in this situation, we need not consider any of the affidavits or other material made of record by applicant in its Section 2(f) claim of distinctiveness. If we find that the mark is merely descriptive of the goods for purposes of Section 2(e)(1), but not so highly descriptive as to be incapable of functioning as a service mark to identify applicant's services and distinguish them from like services of others, we must determine whether the evidence in support of applicant's claim of distinctiveness is sufficient to warrant registration under the provisions of Section 2(f) of the Trademark Act.

Similarly, 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.

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 Trademark Trial and Appeal 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 should 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 generally In re Educational Communications, Inc., 231 USPQ 787 (TTAB 1986); In re Broco, 225 USPQ 227 (TTAB 1984).

See TMEP §§816.02 and 1102.03 regarding amending a §1(b) application to the Supplemental Register.

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 should so inform the applicant and inquire whether the applicant wishes to delete the statement or to rely on it.

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. (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 resort 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 may delete the statements from the TRAM database, enter a note to the file that this has been done, and approve the application for publication. The documents containing the unnecessary §2(f) claim will remain in the record, but the 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 Washington, 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 (as to a Portion of the Mark)

A claim of acquired distinctiveness may apply to a portion of a mark. The applicant must clearly identify the portion of the mark for which distinctiveness is claimed. The standards for establishing acquired distinctiveness are the same whether the claim of distinctiveness pertains to the entire mark or to a portion of it. See TMEP §§1212.09 et seq. regarding claims of acquired distinctiveness in intent-to-use applications under §1(b) of the Act.

Generally, the element that is the subject of the §2(f) claim must present a distinct commercial impression apart from the other elements of the mark. That is, it must be a separable element.

If the examining attorney determines that the claim of distinctiveness as to a portion of the mark is appropriate, the examining attorney should ensure that the record reflects that the §2(f) claim applies to the mark "in part" and that the relevant portion of the mark is identified.

If a claim of distinctiveness applies to only part of a mark and the examining attorney determines (1) that the claimed portion of the mark is unregistrable even under §2(f) (e.g., because it is generic or functional), or (2) that, 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, if a disclaimer is otherwise appropriate. See In re Lillian Vernon Corp., 225 USPQ 213 (TTAB 1985) (requirement for disclaimer of PROVENDER affirmed 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 Industries, 222 USPQ 258 (TTAB 1984) (requirement for disclaimer of CHOPPER reversed in application to register CHOPPER 1 and design for wood log splitting axes (claim of §2(f) distinctiveness in part held acceptable)).

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) Non-Final 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 non-final action refusing registration on the Principal Register pursuant to the appropriate section of the Trademark Act (e.g., §2(e)(1)), with a finding that the applicant's evidence of secondary meaning is insufficient to overcome the stated 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 should issue a non-final 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)(1)). The underlying statutory basis for refusal remains the same (e.g., §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 non-final action repeating the underlying statutory basis for refusal (e.g., §2(e)(1)), and explaining that 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 Educational Communications, 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)(1). 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 non-final 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 should specify the reasons for this determination. See In re Interstate Folding Box Co., 167 USPQ 241, 242 (TTAB 1970); In re H. A. Friend & Co., Inc., 158 USPQ 609 (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 International 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. International Association of Fire Chiefs, 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) (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.").

An underlying basis of refusal common in each of the situations referred to above is the failure of the matter to function as a mark within the meaning of the Trademark Act (15 U.S.C. §§1051, 1052 and 1127). In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).

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 Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987). See, e.g., In re Melville Corp., 228 USPQ 970, 970 n.2 (TTAB 1986) ("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 Systems, 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. Marketing Displays, Inc., 532 U.S. 23, 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."); 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. Nevertheless, the evidence submitted by the applicant should be reviewed to determine whether it has any bearing on the underlying basis of refusal.

See also In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (the Board, while 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).