TMEP 1212.04(d): Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905

This is the October 2015 Edition of the TMEP

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1212.04(d)    Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905

Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), states that ownership of an active prior registration “on the Principal Register or under the Act of 1905” may be accepted as prima facie evidence of distinctiveness. Therefore, claims of acquired distinctiveness under §2(f) may not be based on ownership of registrations on the Supplemental Register. See In re Canron, Inc., 219 USPQ 820, 822n.2 (TTAB 1983).

Additionally, a claim of acquired distinctiveness may not be based on a registration that is cancelled or expired. See 37 C.F.R. §2.41(a)(1); In re BankAmerica Corp., 229 USPQ 852, 853 (TTAB 1986). When an examining attorney considers a §2(f) claim based on ownership of one or more prior registrations, the examining attorney must confirm, in the records of the USPTO, that the claimed registrations were issued on the Principal Register or under the Act of 1905 and that they are in full force and effect.