TMEP 1212.04(e): Form of §2(f) Claim Based on Ownership of Prior Registrations

This is the October 2015 Edition of the TMEP

Previous: §1212.04(d) | Next: §1212.05

1212.04(e)    Form of §2(f) Claim Based on Ownership of Prior Registrations

The following language may be used to claim distinctiveness under §2(f) for a trademark or service mark on the basis of ownership of one or more prior registrations:

The mark has become distinctive of the goods and/or services as evidenced by ownership of active U.S. Registration No(s). __________ on the Principal Register for the same mark for sufficiently similar goods and/or services.

See 37 C.F.R. §2.41(a)(1).

If the applicant is relying solely on its ownership of one or more active prior registrations as proof of acquired distinctiveness, the §2(f) claim does not have to be verified. Therefore, an applicant or an applicant’s attorney may authorize amendment of an application to add such a claim through an examiner’s amendment, if otherwise appropriate.