TMEP 1212.04: Prior Registrations as Proof of Distinctiveness

This is the October 2015 Edition of the TMEP

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1212.04    Prior Registrations as Proof of Distinctiveness

Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), provides that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register or under the Act of 1905. See TMEP §1212.04(b) as to what constitutes the “same mark,” and TMEP §§1212.09–1212.09(b) concerning §1(b) applications.

The rule states that, “in appropriate cases,” ownership of existing registrations to establish acquired distinctiveness “may be accepted as sufficient prima facie evidence of distinctiveness,” but that the USPTO may, at its option, require additional evidence of distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985).

The following are general guidelines regarding claiming ownership of prior registrations as a method of establishing acquired distinctiveness.