1212.07 Form of Application Asserting Distinctiveness
To base a registration on acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), an applicant must indicate its intent to do so.
The indication of the applicant’s intent to rely on §2(f) can take a variety of forms, for example, a statement that registration is requested under §2(f); a statement that the mark has become distinctive, or that the applicant believes the mark has become distinctive of the goods/services/classes in commerce; the statement relating to five years’ use in commerce as suggested in §2(f); or a statement that evidence is being submitted in support of acquired distinctiveness.
If it is unclear from the application whether a claim of distinctiveness under §2(f) has been made, the examining attorney must inquire whether the applicant is seeking registration under §2(f). See TMEP §1212.02(d) concerning unnecessary §2(f) claims.
If the statement requesting registration under §2(f) and the evidence submitted to establish acquired distinctiveness are in the application when filed, the §2(f) statement and proof are supported by the verification of the application.
If a claim of distinctiveness pursuant to §2(f) is submitted as an amendment, or if additional evidence is added in an amendment, the nature of the proof submitted to establish acquired distinctiveness determines whether a verification is necessary.
A claim of ownership of one or more active prior registrations as proof of distinctiveness does not have to be verified. See TMEP §1212.04(e).
If the applicant claims that the mark has become distinctive of the applicant’s goods and/or services through substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, the claim must be verified, i.e., supported by an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2). In addition, any substitute statement amending the nature of an acquired-distinctiveness claim based on five years’ use – such as an amendment of a §2(f) claim as to the entire mark to a §2(f) claim in part, or vice versa – must be verified. See TMEP §1212.05(d) regarding the suggested format for a claim of proof of five years’ use for a trademark, service mark, collective mark, and certification mark and §1212.02(f)(i) regarding the standards for establishing acquired distinctiveness for §2(f)-in-part claims. See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding persons properly authorized to sign on behalf of applicant.
If an application is amended to add a §2(f) claim relying on other types of evidence, there may be considerable flexibility as to form. While statements by the applicant regarding advertising or sales figures or other facts that may show acquired distinctiveness would normally be presented in the form of affidavits, or declarations under 37 C.F.R. §2.20, verification may not be required for other types of evidence. The examining attorney will determine whether the evidence relied on is of a nature that requires verification by the applicant.