TMEP 1212.02(f)(ii): Appropriate/Inappropriate Situations for Claiming §2(f) in Part

October 2017 Edition of the TMEP

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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.