TMEP 1212.02(f)(i): Standards for Establishing Acquired Distinctiveness for Claims of §2(f) in Part

October 2017 Edition of the TMEP

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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.