1209.02(b) Descriptive and Possibly Generic Marks – Assertion of §2(f) in Application
If the applicant asserts acquired distinctiveness under §2(f) in the original application and the examining attorney determines that the applied-for mark is a generic name for the applicant’s goods or services, the examining attorney must issue a nonfinal action refusing registration under Trademark Act §§1, 2, and 45, for trademarks, and §§1, 2, 3, and 45, for service marks, on the basis that the mark is generic and stating that the claim of acquired distinctiveness is insufficient to overcome the refusal. See 15 U.S.C. §§1051, 1052, 1053, 1127. The examining attorney must also refuse registration under §2(e)(1), in the alternative, as merely descriptive and must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the mark is ultimately deemed not to be generic.
If the examining attorney ultimately issues a final refusal under §§1, 2, and 45, or §§1, 2, 3, and 45, on the ground that the mark is generic, the descriptiveness refusal under §2(e)(1), including an explanation of the insufficiency of any §2(f) evidence, must also be made final, in the alternative, in case the mark is ultimately determined not to be generic. See, e.g., In re Candy Bouquet Int’l, I73 USPQ2d 1883 (TTAB 2004); In re Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001).
If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be generic. See In re Country Music Ass’n, 100 USPQ2d 1824, 1834 (TTAB 2011) (interpreting the examining attorney’s silence on the sufficiency of the evidence submitted in support of applicant’s claim of acquired distinctiveness "as a concession that, if the term is not generic, the record evidence is sufficient to show acquired distinctiveness under Section 2(f)"). Compare In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be nonfunctional.