T.M.E.P. § 1212.09
Intent-to-Use Applications and Distinctiveness
Executive summary:
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1212.09 Intent-to-Use Applications and Distinctiveness
1212.09(a) Section 2(f) Claim Requires Prior Use
Section 2(f), 15 U.S.C. 1052(f), is limited by its terms to "a mark used by the applicant." A claim of distinctiveness under §2(f) is normally not filed in a §1(b) application before the applicant files an amendment to allege use or a statement of use, because a claim of acquired distinctiveness, by definition, requires prior use.
However, an intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under §2(f) before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of the applicant's use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
The required showing is essentially twofold. First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce. All of the rules and legal precedent pertaining to such a showing in a use-based application are equally applicable in this context.... Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use.
In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).
To satisfy the first element, the applicant must establish acquired distinctiveness as to the other goods or services by appropriate evidence, such as ownership of a prior registration for the same mark for related goods or services (see TMEP §§1212.04 et seq.), a prima facie showing of acquired distinctiveness based on five years' use of the same mark with related goods or services (see TMEP §§1212.05 et seq.), or actual evidence of acquired distinctiveness for the same mark with respect to the other goods or services (see TMEP §§1212.06 et seq.).
To satisfy the second element, applicant must submit evidence showing "the extent to which the goods or services in the intent-to-use application are related to the goods or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark's established trademark function will transfer to the related goods or services when use in commerce occurs." In re Rogers, 53 USPQ2d at 1745.
The fact that a mark is famous in connection with certain goods or services does not necessarily lead to the conclusion that, upon use, distinctiveness will transfer to use of the mark in connection with unrelated goods or services in an intent-to-use application. In Rogers, the Board stated that:
The owner of a famous mark must still establish a strong likelihood of transference of the trademark function to the goods or services identified in the intent-to-use application. This factually-based determination will still involve establishing some degree of relationship between the goods or services for which the mark is famous and the goods or services in the intent-to-use application.
53 USPQ2d at 1745-1746.An applicant whose application is based on use in commerce under 15 U.S.C. 1051(a) may also base a claim of acquired distinctiveness under §2(f) on long use of the mark on related goods or services, if the applicant meets the requirements set forth above.
1212.09(b) Claim of §2(f) "in Part" in §1(b) Application
An intent-to-use applicant may also file a claim of acquired distinctiveness under §2(f) of the Trademark Act as to part of a mark before filing an acceptable amendment to allege use or statement of use. The claim must indicate that the applicant has already used the relevant part of the mark in commerce on or in connection with the specified goods or services or other goods or services as discussed above. See TMEP §1212.02(f) regarding claims of §2(f) distinctiveness "in part."
Evidence in support of such a claim may consist of (1) ownership of a prior registration covering the relevant part of the mark and the same or related goods or services (see TMEP §§1212.04 et seq.); (2) a prima facie showing of distinctiveness based on five years' use of the relevant part of the mark with the same or related goods or services (see TMEP §§1212.05 et seq.); or (3) actual evidence of acquired distinctiveness of the relevant part of the mark with respect to the same or related goods or services (see TMEP §§1212.06 et seq.). The examining attorney should consider the claim in the same manner as any other claim under §2(f).
If the examining attorney determines that the applicant has established acquired distinctiveness as to the relevant part of the mark, the examining attorney should withdraw any refusal related to the nondistinctive character of that part of the mark.