TMEP 1212.09(b): Claim of §2(f) "in Part" in §1(b) Applications

October 2017 Edition of the TMEP

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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 acquired 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, by submission of relevant evidence, 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 related goods or services when use in commerce begins. In re Rogers, 53 USPQ2d 1741, 1745 (TTAB 1999); see TMEP §1212.09(a).

Simply because the mark may not have been used on or in connection with the goods or services identified in the intent-to-use application, applicant is not excused from the need to demonstrate this strong likelihood of transference in order to establish acquired distinctiveness of the mark in connection with the goods or services with which applicant intends to use the mark.

In re Rogers, 53 USPQ2d at 1745.

There are numerous ways the strong likelihood of transference can be shown, including, but not limited to, "results of focus groups and market surveys of prospective purchasers, and/or evidence regarding practices in the relevant industry." Id. at 1745 n.5.

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.