1212.08 Section 44 and §66(a) Applications and Distinctiveness
In applications based on §44(d), §44(e), or §66(a) of the Trademark Act, 15 U.S.C. §1126(d), §1126(e), §1141f(a), registration may be sought under §2(f) as to the entire mark upon showing that the mark has acquired distinctiveness in commerce that may lawfully be regulated by the U.S. Congress. See In re Etablissements Darty et Fils, 759 F.2d 15, 18, 225 USPQ 652, 654 (Fed. Cir. 1985). Similarly, registration may be sought under §2(f) in part upon showing that the relevant part of the mark has acquired distinctiveness in commerce that may lawfully be regulated by the U.S. Congress. Id. The same standards for establishing acquired distinctiveness apply whether the application is based on §1(a), §44, or §66(a). Although dates of first use are not required in applications based solely on §44 or §66(a), reference to length of use in commerce or information as to specific dates of use in commerce, presented in support of the claim of acquired distinctiveness, is clearly relevant to a determination of the acceptability of the claim.
The applicant may not rely on use other than use in commerce that may be regulated by the U.S. Congress in establishing acquired distinctiveness. Evidence of use solely in a foreign country, or between two foreign countries, is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741, 1746 (TTAB 1999).