TMEP 1212.02(j): Section 2(f) Claim Restricted to Particular Goods/Services/Classes

October 2017 Edition of the TMEP

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1212.02(j)    Section 2(f) Claim Restricted to Particular Goods/Services/Classes

An applicant may claim acquired distinctiveness as to certain classes in a multiple-class application, or as to only a portion of the goods/services within a single class. The applicant must clearly identify the goods/services/classes for which distinctiveness is claimed. The standards for establishing acquired distinctiveness are the same whether the claim of distinctiveness pertains to all or to only a portion of the goods/services.

If the examining attorney determines that a claim of distinctiveness as to a portion of the goods/services/classes is appropriate, the examining attorney must ensure that the "§2(f)" field in the Trademark database indicates that the §2(f) claim is restricted to certain goods/services/classes, and that those goods/services/classes are clearly identified in the restriction statement of record in the USPTO database. See the following example, where the applicant is claiming §2(f) for the entire mark, but only as to a portion of the goods/services:

Sample of a 2F statement as viewed in the TRAM database with Section 2F marked as "YES", Section 2F in part marked as "NO", and the statement "The 2(f) claim is restricted to class(es) specify classes as to the specify goods/services."

See also the following example, where the applicant is claiming §2(f) in part (not as to the entire mark), restricted to a portion of the goods/services:

Sample of a 2F statement as viewed in the TRAM database with Section 2F marked as "NO", Section 2F in part marked as "YES", and the statement "The 2(f) in part claim is restricted to class(es) specify classes as to the specify goods/services."

A separate limitation statement is also required for claims of §2(f) in part. See TMEP §1212.10.