1212.09(b) Claim of §2(f) “in Part” in §1(b) Applications
An intent-to-use applicant may assert a claim of acquired distinctiveness under §2(f) as to part of a mark prior to filing an acceptable allegation of use if the applicant has already used the relevant part of the mark in commerce on or in connection with the specified goods or services, or related goods or services. See TMEP §1212.02(f) regarding claims of §2(f) “in part.”
The requirements to support such a claim are twofold. First, the applicant must establish acquired distinctiveness of the relevant portion of the mark through the same methods required in a use-based application. See TMEP §1212.02(f)(i). Evidence in support of such a claim may consist of: (1) ownership of an active prior registration on the Principal Register covering the relevant portion of the mark and sufficiently similar or related goods or services (see TMEP §§1212.04–1212.04(e)); (2) a prima facie showing of distinctiveness based on five years’ use of the relevant portion of the mark with the same or related goods or services (see TMEP §§1212.05–1212.05(d)); or (3) actual evidence of acquired distinctiveness of the relevant portion of the mark with respect to the same or related goods or services (see TMEP §§1212.06–1212.06(e)(iv)).
Second, if the relevant portion of the mark has been used with related, as opposed to identical, goods or services, the applicant must additionally show the extent to which the goods or services in the §1(b) application are related to the goods or services in connection with which the mark is distinctive, and a strong likelihood that the mark’s established trademark function will transfer to the related goods or services when use in commerce begins. In re Rogers, 53 USPQ2d 1741, 1745 (TTAB 1999); see TMEP §1212.09(a).
If the examining attorney determines that the applicant has established acquired distinctiveness as to the relevant portion of the mark, the examining attorney must withdraw any refusal related to the nondistinctive character of that part of the mark.