TMEP 1212.02(h): Nonfinal and Final Refusals

This is the October 2015 Edition of the TMEP

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1212.02(h)    Nonfinal and Final Refusals

If an application is filed under §2(f) of the Trademark Act and the examining attorney determines that (1) the mark is not inherently distinctive, and (2) the applicant’s evidence of secondary meaning is insufficient to establish that the mark has acquired distinctiveness, the examining attorney will issue a nonfinal action refusing registration on the Principal Register pursuant to the appropriate section of the Trademark Act (e.g., §2(e)(1)), and will separately explain why the applicant’s evidence of secondary meaning is insufficient to overcome the underlying statutory basis for refusal. The examining attorney should suggest, where appropriate, that the applicant submit additional evidence. See TMEP §1212.02(g) concerning the examining attorney’s role in suggesting a claim of distinctiveness under §2(f).

If an application is not filed under §2(f) and the examining attorney determines that the mark is not inherently distinctive, the examining attorney will issue a nonfinal action refusing registration on the Principal Register under the appropriate section of the Act (e.g., §2(e)(1)). The examining attorney should suggest, where appropriate, that the applicant amend its application to claim distinctiveness under §2(f).

Thereafter, if the applicant amends its application to seek registration under §2(f), a new issue is raised as to the sufficiency of the applicant’s evidence of secondary meaning (see TMEP §714.05(a)(i)). The underlying statutory basis for refusal remains the same (i.e., §2(e)(1)), but the issue changes from whether the underlying refusal is warranted to whether the matter has acquired distinctiveness. If the examining attorney is persuaded that a prima facie case of acquired distinctiveness has been established, the examining attorney will approve the application for publication under §2(f). If the examining attorney determines that the applicant’s evidence is insufficient to establish that the matter has acquired distinctiveness, the examining attorney will issue a second nonfinal action repeating the underlying statutory basis for refusal (e.g., §2(e)(1)), and explaining why the applicant’s evidence is insufficient to overcome the stated refusal.

The examining attorney cannot issue a final refusal on the underlying statutory basis of the original refusal, upon an applicant’s initial assertion of a §2(f) claim. The mere assertion of distinctiveness under §2(f) raises a new issue. See In re Educ. Commc’ns, Inc., 231 USPQ 787, 787 n.2 (TTAB 1986). Even if the applicant has submitted, in support of the §2(f) claim, a statement of five years’ use that is technically defective (e.g., not verified or comprising incorrect language), the assertion of §2(f) distinctiveness still constitutes a new issue.

Exception: The examining attorney may issue a final refusal upon an applicant’s initial assertion of a §2(f) claim if the amendment is irrelevant to the outstanding refusal. See TMEP §714.05(a)(i). See also TMEP §§1212.02(a) and 1212.02(i) regarding situations where it is and is not appropriate to submit a claim of acquired distinctiveness to overcome a refusal.

After the examining attorney has issued a nonfinal action refusing registration on the Principal Register with a finding that the applicant’s evidence of secondary meaning is insufficient to overcome the stated refusal, the applicant may elect to submit additional arguments and/or evidence regarding secondary meaning. If, after considering this submission, the examining attorney is persuaded that the applicant has established a prima facie case of acquired distinctiveness, the examining attorney will approve the application for publication under §2(f). If the examining attorney is not persuaded that the applicant has established a prima facie case of acquired distinctiveness, and the application is otherwise in condition for final refusal, the examining attorney will issue a final refusal pursuant to the appropriate section of the Act (e.g., §2(e)(1)), with a finding that the applicant’s evidence of acquired distinctiveness is insufficient to overcome the stated refusal. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983).

In any action in which the examining attorney indicates that the evidence of record is insufficient to establish that the mark has acquired distinctiveness, the examining attorney must specify the reasons for this determination. See In re Interstate Folding Box Co., 167 USPQ 241, 243 (TTAB 1970); In re H. A. Friend & Co., 158 USPQ 609, 610 (TTAB 1968).