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

This is the October 2015 Edition of the TMEP

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1212.02(f)(ii)(A)    Appropriate Situations for Claiming §2(f) in Part

Descriptive Matter Combined with an Inherently Distinctive Element

Claiming §2(f) in part should generally be reserved for those situations where descriptive matter is combined with an inherently distinctive element, such as arbitrary words or an inherently distinctive design, and where the descriptive matter presents a separate and distinct commercial impression apart from the other matter in the mark.

For example, if the mark is TASTY SNACKERS for potato chips and the applicant can show acquired distinctiveness as to the descriptive word TASTY, the applicant must limit the claim under §2(f) to the word TASTY (i.e., “2(f) in part as to TASTY”) since the term SNACKERS is inherently distinctive.

Similarly, if the mark is TASTY SNACKERS POTATO CHIPS for potato chips and the applicant can show acquired distinctiveness as to TASTY, the applicant must limit the claim under §2(f) to the word TASTY (i.e., “2(f) in part as to TASTY”) since the term SNACKERS is inherently distinctive. The applicant must also disclaim the generic wording POTATO CHIPS.

Moreover, if the mark is TASTY POTATO CHIPS combined with a design for potato chips and the applicant can show acquired distinctiveness as to the wording TASTY POTATO CHIPS, the applicant must limit the claim under §2(f) to the wording TASTY POTATO CHIPS (i.e., “2(f) in part as to TASTY POTATO CHIPS”). The applicant must also disclaim the generic wording POTATO CHIPS.

Alternatively, if the mark is TASTY POTATO CHIPS combined with an inherently distinctive design for potato chips and the applicant can only show acquired distinctiveness as to TASTY (e.g., because the applicant had not previously used the entire wording TASTY POTATO CHIPS), the applicant must limit the claim under §2(f) to the word TASTY (i.e., “2(f) in part as to TASTY”). The applicant must also disclaim the generic wording POTATO CHIPS.

Geographically Descriptive Matter Combined with an Inherently Distinctive Element

Claims of §2(f) in part are also appropriate when a mark is comprised of geographically descriptive matter combined with an inherently distinctive element, and the geographically descriptive matter presents a separate and distinct commercial impression apart from the other matter in the mark.

For example, if the mark is TEXAS GOLD for car-cleaning preparations and the applicant, who is based in Texas, can show acquired distinctiveness as to TEXAS, the applicant must limit the claim under §2(f) to the word TEXAS only (i.e., “2(f) in part as to TEXAS”) since the term GOLD is inherently distinctive.

Similarly, if the mark is TEXAS combined with an inherently distinctive design element for car-cleaning preparations and the applicant, who is again from Texas, can show acquired distinctiveness as to the wording in the mark, the applicant must limit the claim under §2(f) to the word TEXAS only (i.e., “2(f) in part as to TEXAS”).

See TMEP §1210.07(b) for further information regarding the registrability of geographic terms under §2(f) in part.

Surname Combined with Generic Wording

Applicants may also claim §2(f) in part for marks comprised of a surname combined with generic wording, when the applicant can show acquired distinctiveness only as to the surname.

For example, if the mark is JONES JEANS for pants and the applicant can only show acquired distinctiveness as to JONES (because the applicant had not previously used the entire wording JONES JEANS, for example), the applicant must limit the claim under §2(f) to the surname JONES only (i.e., “2(f) in part as to JONES”). The applicant must also disclaim the generic wording JEANS. However, this situation is rare, and the record must clearly reflect that the applicant can only show acquired distinctiveness as to the claimed portion of the mark. Note, by contrast, that if the applicant’s prior use is of the entire mark, JONES JEANS, a claim of §2(f) in part would be incorrect because the claim of acquired distinctiveness should apply to the entire mark. That is, in this example, the proper claim would be §2(f) as to JONES JEANS with a separate disclaimer of JEANS.

As an Alternative to a Disclaimer

A claim of §2(f) in part may be offered as an alternative to a disclaimer requirement, if it appears that the applicant can establish acquired distinctiveness in the relevant portion of the mark.

For example, if the mark is MOIST MORSELS combined with an inherently distinctive design for various food items, the applicant must enter a disclaimer of MOIST MORSELS or, if appropriate, a claim of §2(f) in part as to MOIST MORSELS.

Examining attorneys are not required to offer the applicant the option of claiming §2(f) in part when issuing a disclaimer requirement. However, it is not uncommon for an applicant to respond to a disclaimer requirement with a claim of §2(f) in part instead of the required disclaimer, and this option may be offered in the first Office action, if appropriate.