TMEP 1212.09(a): Section 2(f) Claim Requires Prior Use

October 2017 Edition of the TMEP

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1212.09(a)    Section 2(f) Claim Requires Prior Use

Section 2(f), 15 U.S.C. §1052(f), is limited by its terms to "a mark used by the applicant." A claim of distinctiveness under §2(f) is normally not filed in a §1(b) application before the applicant files an allegation of use, because a claim of acquired distinctiveness, by definition, requires prior use.

However, an intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under §2(f) before filing an allegation of use, if the applicant can establish that, as a result of the applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).

The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

The required showing is essentially twofold. First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce. All of the rules and legal precedent pertaining to such a showing in a use-based application are equally applicable in this context.... Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use.

In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).

To satisfy the first element, the applicant must establish acquired distinctiveness as to the other goods or services by appropriate evidence, such as ownership of an active prior registration for the same mark for sufficiently similar or related goods or services (see TMEP §§1212.04–1212.04(e)), a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods or services (see TMEP §§1212.05–1212.05(d)), or actual evidence of acquired distinctiveness for the same mark with respect to the other goods or services (see TMEP §§1212.06–1212.06(e)(iv)). See In re Highlights for Children, Inc., 118 USPQ2d 1268, 1273-75 (TTAB 2016) (finding that the applied-for mark, IMÁGENES ESCONDIDAS, and the previously registered English equivalent, HIDDEN PICTURES, are not the "same mark" because they are entirely different both aurally and visually, and applicant provided no evidence demonstrating that consumers would consider the two marks to be the same mark even if they understood the equivalence in meaning); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547-48 (TTAB 2010) (finding applicant failed to meet the first requirement, because the intent-to-use mark THE BOLLYWOOD REPORTER was not deemed to be the "same" mark as the previously registered marks THE HOLLYWOOD REPORTER, THEHOLLYWOODREPORTER.COM, and THE HOLLYWOOD REPORTER STUDIO BLU-BOOK); In re Binion, 93 USPQ2d 1531, 1539 (TTAB 2009) (finding applicant failed to meet the first requirement, because the intent-to-use marks BINION and BINION’S were not deemed to be the "same" marks as the previously registered marks JACK BINION and JACK BINION’S).

To satisfy the second element, applicant must show "the extent to which the goods or services in the intent-to-use application are related to the goods or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods or services when use in commerce occurs." Rogers, 53 USPQ2d at 1745.

The showing necessary to establish relatedness will vary from case to case, depending on the nature of the goods or services involved and the language used to identify them. There is no absolute rule that applicant must submit extrinsic evidence to support its contention that the goods are related in every case. Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 (TTAB 2007) (deeming close relationship between cereal and food bars derived from cereal "self evident from the respective identifications of goods").

The fact that a mark is famous in connection with certain goods or services does not necessarily lead to the conclusion that, upon use, distinctiveness will transfer to use of the mark in connection with unrelated goods or services in an intent-to-use application. In Rogers, the Board stated that:

The owner of a famous mark must still establish a strong likelihood of transference of the trademark function to the goods or services identified in the intent-to-use application. This factually-based determination will still involve establishing some degree of relationship between the goods or services for which the mark is famous and the goods or services in the intent-to-use application.

53 USPQ2d at 1745-1746.

An applicant whose application is based on use in commerce under §1(a), 15 U.S.C. §1051(a), may also base a claim of acquired distinctiveness under §2(f) on long-term use of the mark on related goods or services, if the applicant meets the requirements set forth above.