A claim of distinctiveness by the applicant under §2(f) is usually made either in response to a statutory refusal to register or in anticipation of such a refusal. See TMEP §714.05(a)(i). A claim of distinctiveness is appropriately made in response to, or in anticipation of, only certain statutory refusals to register. For example, it is inappropriate to assert acquired distinctiveness to contravene a refusal under §2(a), (b), (c), (d), or (e)(5), 15 U.S.C. §1052(a), (b), (c), (d), (e)(5). Furthermore, acquired distinctiveness may not be asserted to contravene a refusal under §2(e)(3), 15 U.S.C. §1052(e)(3), unless the mark became distinctive of the applicant’s goods in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act (see TMEP §1210.07(b)). See TMEP §§1210.05(d)–1210.05(d)(ii) regarding procedures for refusing registration under §2(a) in response to a claim that a geographically deceptive mark acquired distinctiveness prior to December 8, 1993.
In In re Soccer Sport Supply Co., 507 F.2d 1400, 1403 n.3, 184 USPQ 345, 348 n.3 (C.C.P.A. 1975), the Court of Customs and Patent Appeals noted as follows:
[T]he judicially developed concept of "secondary meaning," codified by section 2(f) (15 U.S.C. 1052(f)), relates to descriptive, geographically descriptive, or surname marks which earlier had a primary meaning which did not indicate a single source and were, therefore, unregistrable because of section 2(e) (citation omitted). Additionally, section 2(f) has been applied to permit registration of a mark consisting solely of a design and, therefore, not within the purview of section 2(e).
For procedural purposes, a claim of distinctiveness under §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as a concession that the matter to which it pertains is not inherently distinctive and, thus, not registrable on the Principal Register absent proof of acquired distinctiveness. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) ("Where an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive."); In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1403 (TTAB 2018) (noting that a claim of acquired distinctiveness by applicant to overcome a refusal in a prior registration for the same wording in connection with the same services "can be viewed as a concession by [a]pplicant that the wording itself is not inherently distinctive for those services"). For the purposes of establishing that the subject matter is not inherently distinctive, the examining attorney may rely on this concession alone. Once an applicant has claimed that matter has acquired distinctiveness under §2(f), the issue to be determined is not whether the matter is inherently distinctive but, rather, whether it has acquired distinctiveness. See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co. , 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *2 (TTAB 2020); Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *5 (TTAB 2020); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *1 (TTAB 2019).
However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP §1212.02(c).
See TMEP §1212.02(d) regarding unnecessary §2(f) claims.
An applicant may argue the merits of an examining attorney’s refusal and, in the alternative, claim that the matter sought to be registered has acquired distinctiveness under §2(f). Unlike the situation in which an applicant initially seeks registration under §2(f) or amends its application without objection, the alternative claim does not constitute a concession that the matter sought to be registered is not inherently distinctive. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011) ; In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992); In re Prof'l Learning Ctrs., Inc., 230 USPQ 70, 71 n.2 (TTAB 1986) .
When an applicant claims acquired distinctiveness in the alternative, the examining attorney must treat separately the questions of: (1) the underlying basis of refusal; and (2) assuming the matter is determined to be registrable, whether acquired distinctiveness has been established. See, e.g., In re Olin Corp., 124 USPQ2d 1327, 1329 (TTAB 2107) ("It has long been established . . . that whether a mark is primarily merely a surname and whether it has acquired secondary meaning are separate considerations under the Trademark Act."). If the applicant has one or more prior registrations under §2(f) for a different depiction of the same mark (e.g., stylized vs. standard character) or a portion of the proposed mark, and for the same goods/services, the examining attorney’s review of the records of the registrations would reveal whether the applicant previously conceded descriptiveness or whether the Board found the mark descriptive on appeal. See In re Thomas Nelson, 97 USPQ2d at 1713. Such an assessment of the probative value of the prior registrations might also assist in resolving whether the mark in question has acquired distinctiveness, thereby obviating the necessity of determining that issue on appeal as well. Id.
In the event of an appeal on both grounds, the Board will use the same analysis, provided the evidence supporting the §2(f) claim is in the record and the alternative grounds have been considered and finally decided by the examining attorney. In re Harrington, 219 USPQ 854, 855 n.1 (TTAB 1983). If the appeal results in a finding of descriptiveness, and also that the mark has acquired distinctiveness, then descriptiveness would be present, even though not conceded by the applicant. In re Thomas Nelson, 97 USPQ2d at 1713.
If the examining attorney accepts the §2(f) evidence, the applicant must be given the option of publication under §2(f) or going forward with the appeal on the underlying refusal. This should be done by telephone or email, with a Note to the File in the record indicating the applicant’s decision, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or email, the examining attorney must issue a written action continuing the underlying refusal and noting that the §2(f) evidence is deemed acceptable and will not be an issue on appeal.
Similarly, in an application under §1 or §44 of the Trademark Act, the applicant may seek registration on the Principal Register under §2(f) and, in the alternative, on the Supplemental Register. Depending on the facts of the case, this approach may have limited practical application. If the examining attorney finds that the matter sought to be registered is not a mark within the meaning of §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1127 (e.g., is generic or purely ornamental) (or §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, 1127, for collective and certification marks), the examining attorney will refuse registration on both registers.
However, if the issues are framed in the alternative (i.e., whether the matter sought to be registered has acquired distinctiveness under §2(f) or, in the alternative, whether it is capable of registration on the Supplemental Register), and it is ultimately determined that the matter is a mark within the meaning of the Act (e.g., that the matter is merely descriptive rather than generic), then the evidence of secondary meaning will be considered. If it is determined that the applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness, the application will be approved for publication on the Principal Register under §2(f). If the evidence is determined to be insufficient, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
Accordingly, the applicant may submit an amendment to the Supplemental Register, and continue to argue entitlement to registration on the Principal Register in an appeal. An applicant may not, however, state that it "reserves the right" to amend to the Supplemental Register if the refusal is not withdrawn or is affirmed on appeal. In re Integrated Embedded, 120 USPQ2d 1504, 1511(TTAB 2016) (stating the "[a]pplicant cannot ‘reserve a right’ that does not exist").
If the applicant files a notice of appeal in such a case, the Board will institute the appeal, suspend action on the appeal and remand the application to the examining attorney to determine registrability on the Supplemental Register.
If the examining attorney determines that the applicant is entitled to registration on the Supplemental Register, the examining attorney must send a letter notifying the applicant of the acceptance of the amendment and telling the applicant that the application is being referred to the Board for resumption of the appeal. If the examining attorney determines that the applicant is not entitled to registration on the Supplemental Register, the examining attorney will issue a nonfinal action refusing registration on the Supplemental Register. If the applicant fails to overcome the refusal, the examining attorney will issue a final action, and refer the application to the Board to resume action on the appeal with respect to entitlement to registration on either the Principal or the Supplemental Register.
Rather than framing the issues in the alternative (i.e., whether the matter has acquired distinctiveness pursuant to §2(f) or, in the alternative, whether it is capable of registration on the Supplemental Register), the applicant may amend its application between the Principal and Supplemental Registers. 37 C.F.R. §2.75; see In re Educ. Commc'ns, Inc., 231 USPQ 787, 787 (TTAB 1986) ; In re Broco, 225 USPQ 227, 228 (TTAB 1984).
See TMEP §§816–816.05 and §1102.03 regarding amending an application to the Supplemental Register, and TBMP §1215 regarding alternative positions on appeal.
If the applicant specifically requests registration under §2(f), but the examining attorney considers the entire mark to be inherently distinctive and the claim of acquired distinctiveness to be unnecessary, the examining attorney must so inform the applicant and inquire whether the applicant wishes to delete the statement or to rely on it.
In this situation, if it is necessary to issue an Office action about another matter, the examining attorney must state in the Office action that the §2(f) claim appears to be unnecessary, and inquire as to whether the applicant wants to withdraw it. If it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or email. If the applicant wants to delete the §2(f) claim, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or email message (applicant must be given at least three business days), the examining attorney must enter a Note to the File in the record and approve the application for publication without deleting the §2(f) claim.
If the applicant specifically requests registration of the entire mark under §2(f), but the examining attorney believes that part of the mark is inherently distinctive, the examining attorney should give the applicant the option of limiting the §2(f) claim to the matter that is not inherently distinctive, if otherwise appropriate. See TMEP §1212.02(f) regarding claims of §2(f) distinctiveness as to a portion of a mark. However, if the applicant wishes, a claim of acquired distinctiveness under §2(f) may be made as to an entire mark or phrase that contains both inherently distinctive matter and matter that is not inherently distinctive. In re Del E. Webb Corp., 16 USPQ2d 1232, 1234 (TTAB 1990) .
If the application contains statements that seem to relate to acquired distinctiveness or §2(f) but do not actually amount to a request for registration under §2(f), and the examining attorney does not believe that resorting to §2(f) is necessary, the examining attorney may treat the statements as surplusage. If it is necessary to communicate with the applicant about another matter, the examining attorney should inform the applicant that the statements are being treated as surplusage. If it is otherwise unnecessary to communicate with the applicant, the examining attorney should delete the statements from the Trademark database, enter a Note to the File in the record indicating that this has been done, and approve the application for publication. The documents containing the surplusage will remain in the record, but a §2(f) claim will not be printed in the Official Gazette or on the certificate of registration. See TMEP §817 regarding preparation of applications for publication or issuance.
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), states, in part, "The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." See In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[W]e conclude that it is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").
A claim of acquired distinctiveness may apply to a portion of a mark (a claim of §2(f) "in part"). The standards for establishing acquired distinctiveness are the same whether a claim of distinctiveness pertains to the entire mark or a portion of it. However, examining attorneys must focus their review of the evidence submitted on the portion of the mark for which acquired distinctiveness is claimed, rather than on the entire mark.
Three basic types of evidence may be used to establish acquired distinctiveness for claims of §2(f) in part for a trademark or service mark:
These three basic types of evidence apply similarly to collective trademarks, collective service marks, and collective membership marks (together "collective marks"), and certification marks, with slight modifications regarding the type of evidence required due to (1) the different function and purpose of collective and certification marks and (2) the fact that these types of marks are used by someone other than the applicant. See 37 C.F.R. §2.41(b)-(d).
The applicant may submit one or any combination of these types of evidence. Depending on the nature of the relevant portion of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness in part.
The amount and character of evidence required typically depends on the facts of each case and the nature of the relevant portion of the mark sought to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960) ; In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB 1985) ; TMEP §1212.01. A determination regarding the acceptability of a §2(f) claim depends on the nature of the relevant portion of the mark and/or the nature and sufficiency of the evidence provided by the applicant. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (finding that applicant’s evidence of prior registrations did not establish that the specific wording at issue had acquired distinctiveness); TMEP §§1212.04(a), 1212.05(a), 1212.06.
The legal principles pertaining to evidence of acquired distinctiveness in part discussed below with respect to trademarks and service marks apply generally to collective marks and certification marks as well.
When a claim of acquired distinctiveness applies to a portion of a mark, the applicant must clearly identify the portion of the mark for which distinctiveness is claimed.
Generally, the element that is the subject of the §2(f) claim must present a separate and distinct commercial impression apart from the other elements of the mark. That is, it must be a separable element in order for the applicant to assert that it has acquired distinctiveness as a mark. Consequently, if a mark is unitary for purposes of avoiding a disclaimer, a claim of §2(f) in part would generally not be appropriate since the elements are so merged together that they cannot be regarded as separable. If appropriate, the applicant can claim §2(f) as to the entire unitary mark.
See TMEP §1212.09(b) regarding claims of §2(f) in part in §1(b) applications, and TMEP §1212.08 regarding claims of §2(f) in part in §44 and §66(a) applications.
See also TMEP §1212.10 for information on printing §2(f)-in-part notations and limitation statements.
Descriptive Matter Combined with an Inherently Distinctive Element
Claiming §2(f) in part is appropriate when descriptive matter that is combined with an inherently distinctive element, such as arbitrary words or an inherently distinctive design, presents a separate and distinct commercial impression apart from the other matter in the mark and has acquired distinctiveness through use by itself.
For example, if the mark is TASTY SNACKARAMA for potato chips and the applicant can show acquired distinctiveness as to the descriptive word TASTY by itself, the applicant must limit the claim under §2(f) to the word TASTY (i.e., "2(f) in part as to TASTY") since the term SNACKARAMA is inherently distinctive.
Similarly, if the mark is TASTY SNACKARAMA POTATO CHIPS for potato chips and the applicant can show acquired distinctiveness as to TASTY by itself, the applicant must limit the claim under §2(f) to the word TASTY (i.e., "2(f) in part as to TASTY") since the term SNACKARAMA is inherently distinctive. The applicant must also disclaim the generic wording POTATO CHIPS.
If the mark is TASTY POTATO CHIPS combined with an inherently distinctive design for potato chips and the applicant can show acquired distinctiveness as to the wording TASTY POTATO CHIPS by itself, the applicant must limit the claim under §2(f) to the wording TASTY POTATO CHIPS (i.e., "2(f) in part as to TASTY POTATO CHIPS"). The applicant must also disclaim the generic wording POTATO CHIPS. See In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018) ("While a generic term standing alone certainly cannot acquire distinctiveness . . . the generic term may be included in the claim of acquired distinctiveness as long as an accompanying disclaimer of the generic term is provided.").
Alternatively, if the mark is TASTY POTATO CHIPS combined with an inherently distinctive design for potato chips and the applicant can only show acquired distinctiveness as to TASTY (e.g., because the applicant had not previously used the entire wording TASTY POTATO CHIPS), the applicant must limit the claim under §2(f) to the word TASTY (i.e., "2(f) in part as to TASTY"). The applicant must also disclaim the generic wording POTATO CHIPS.
Geographically Descriptive Matter Combined with an Inherently Distinctive Element
Claims of §2(f) in part are also appropriate when a mark is comprised of geographically descriptive matter combined with an inherently distinctive element, and the geographically descriptive matter presents a separate and distinct commercial impression apart from the other matter in the mark and has acquired distinctiveness through use by itself.
For example, if the mark is TEXAS GOLD for car-cleaning preparations and the applicant, who is based in Texas, can show acquired distinctiveness as to TEXAS by itself, the applicant must limit the claim under §2(f) to the word TEXAS only (i.e., "2(f) in part as to TEXAS") since the term GOLD is inherently distinctive.
Similarly, if the mark is TEXAS combined with an inherently distinctive design element for car-cleaning preparations and the applicant, who is again from Texas, can show acquired distinctiveness as to the wording in the mark, the applicant must limit the claim under §2(f) to the word TEXAS only (i.e., "2(f) in part as to TEXAS").
An applicant may claim §2(f) in part as to wording consisting of both geographically descriptive matter and generic matter if the applicant establishes that the combined wording as a whole has acquired distinctiveness and provides a disclaimer of the generic matter. See In re Am. Furniture Warehouse CO, 126 USPQ2d at 1407-08 (TTAB 2018) (accepting a §2(f)-in-part claim as to AMERICAN FURNITURE WAREHOUSE, provided that applicant disclaimed FURNITURE WAREHOUSE).
See TMEP §1210.07(b) for further information regarding the registrability of geographic terms under §2(f) in part.
Surname Combined with Generic Wording
Applicants may also claim §2(f) in part for marks comprised of a surname combined with generic wording, when the applicant can show acquired distinctiveness only as to the surname.
For example, if the mark is JONES JEANS for pants and the applicant can only show acquired distinctiveness as to JONES (because the applicant had not previously used the entire wording JONES JEANS, for example), the applicant must limit the claim under §2(f) to the surname JONES only (i.e., "2(f) in part as to JONES"). The applicant must also disclaim the generic wording JEANS. However, this situation is rare, and the record must clearly reflect that the applicant can only show acquired distinctiveness as to the claimed portion of the mark. Note, by contrast, that if the applicant’s prior use is of the entire mark, JONES JEANS, a claim of §2(f) in part would be incorrect because the claim of acquired distinctiveness should apply to the entire mark. That is, in this example, the proper claim would be §2(f) as to JONES JEANS with a separate disclaimer of JEANS.
As an Alternative to a Disclaimer
A claim of §2(f) in part may be offered as an alternative to a disclaimer requirement, if it appears that the applicant can establish acquired distinctiveness in the relevant portion of the mark.
For example, if the mark is MOIST MORSELS combined with an inherently distinctive design for various food items, the applicant must enter a disclaimer of MOIST MORSELS or, if appropriate, a claim of §2(f) in part as to MOIST MORSELS. Any generic matter included in such a claim must still be disclaimed. See In re Am. Furniture Warehouse CO, 126 USPQ2d at 1407-08.
Examining attorneys are not required to offer the applicant the option of claiming §2(f) in part when issuing a disclaimer requirement. However, it is not uncommon for an applicant to respond to a disclaimer requirement with a claim of §2(f) in part instead of the required disclaimer, and this option may be offered in the first Office action, if appropriate.
Claim Applies to Entire Mark
When a mark is comprised of merely descriptive matter, geographically descriptive matter, or a surname combined with generic matter, and the applicant has made a prima facie case of acquired distinctiveness, the applicant’s §2(f) claim should generally refer to the entire mark as used, with a separate disclaimer of any generic or otherwise unregistrable component. See In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018) ("[A] generic term may be included in the claim of acquired distinctiveness as long as an accompanying disclaimer of the generic term is provided."). See TMEP §1212.02(f)(ii)(A) regarding including generic matter in §2(f)-in-part claims.
For example, if the mark is NATIONAL CAR RENTAL for car-rental services and the applicant can show acquired distinctiveness as to the entire mark, the proper claim is §2(f) as to NATIONAL CAR RENTAL with a separate disclaimer of the generic wording CAR RENTAL. Similarly, if the mark is NATIONAL CAR RENTAL combined with an inherently distinctive design element, and the applicant can show acquired distinctiveness as to the entire wording, the proper §2(f) statement is §2(f) in part as to the wording NATIONAL CAR RENTAL with a separate disclaimer of CAR RENTAL. In these examples, it would be improper to limit the §2(f) statement to the word NATIONAL because the applicant is not claiming acquired distinctiveness as to NATIONAL, but rather as to the wording NATIONAL CAR RENTAL.
However, if the applicant can show acquired distinctiveness only as to the word NATIONAL (e.g., because the applicant had not previously used the entire wording NATIONAL CAR RENTAL), the applicant may claim §2(f) in part as to NATIONAL and must separately disclaim CAR RENTAL. Similarly, if the mark is NATIONAL CAR RENTAL combined with an inherently distinctive design element, and the applicant can show acquired distinctiveness only as to the word NATIONAL, the proper §2(f) statement is §2(f) in part as to the word NATIONAL with a separate disclaimer of CAR RENTAL. This situation is rare, and the record must clearly reflect that the applicant can show acquired distinctiveness only as to the claimed portion of the mark.
If a §2(f)-in-part claim is improperly provided by the applicant when the record reflects that the §2(f) claim should apply to the entire mark, or vice versa, the examining attorney must issue a new requirement to correct the §2(f) claim. See TMEP §§1212.05(d) and 1212.07 regarding verification of amended §2(f) claims based on five years’ use.
Inappropriate Alternative to a Disclaimer
In some situations, §2(f) in part is not an acceptable alternative to a disclaimer requirement. Specifically, if an applicant’s claim of distinctiveness applies to only part of a mark and the examining attorney determines that (1) the claimed portion of the mark is unregistrable (e.g., generic) and therefore the §2(f) claim is of no avail or (2) although the claimed portion is registrable, the applicant has failed to establish acquired distinctiveness, the examining attorney may require a disclaimer of that portion of the mark, assuming a disclaimer is otherwise appropriate. See In re Lillian Vernon Corp., 225 USPQ 213 (TTAB 1985) (affirming requirement for disclaimer of PROVENDER in application to register PROVENDER and design for "mail order services in the gourmet, bath and gift item field," "provender" meaning "food" (claim of §2(f) distinctiveness in part held unacceptable)) ; cf. In re Chopper Indus.,222 USPQ 258 (TTAB 1984) (reversing requirement for disclaimer of CHOPPER in application to register CHOPPER 1 and design for wood log splitting axes (claim of §2(f) distinctiveness in part held acceptable)).
Relying on a Claim of Ownership of a Prior Registration
In certain cases, an applicant may not rely on ownership of one or more prior registrations on the Principal Register of the relevant portion of the mark, for goods or services that are the same as or related to those named in the pending application, to support a claim of §2(f) in part.
First, if the term for which the applicant seeks to prove distinctiveness was disclaimed in the claimed prior registration, the prior registration may not be accepted as prima facie evidence of acquired distinctiveness. See Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 n.5 (TTAB 2007) ; In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1889-90 (TTAB 2004) ; TMEP §1212.04(a). For example, if the mark is TASTY SNACKARAMA for potato chips and the applicant attempts to rely on a prior registration for the mark TASTY combined with an inherently distinctive design, with TASTY disclaimed, for the same goods, to support its claim of acquired distinctiveness as to the descriptive word TASTY, such evidence would not be sufficient since the word TASTY was disclaimed in the prior registration. Absent additional evidence to show acquired distinctiveness as to TASTY, the examining attorney must require the applicant to delete the claim of §2(f) in part, and instead provide a disclaimer of the term TASTY.
Second, when an applicant is claiming §2(f) in part as to only a portion of its mark, the mark in the claimed prior registration must be the same as or the legal equivalent of the portion of the mark for which the applicant is claiming acquired distinctiveness. A mark is the legal equivalent of a portion of another mark if it creates the same, continuing commercial impression such that the consumer would consider the mark to be the same as the portion of the other mark. See TMEP §1212.04(b) and cases cited therein.
§2(f) in Part versus §2(f) Claim Restricted to Particular Goods, Services, or Classes
A claim of §2(f) in part should not be confused with a §2(f) claim restricted to certain classes in a multiple-class application or to a portion of the goods/services within a single class. Such a restriction can be made regardless of whether the applicant is claiming §2(f) for the entire mark or §2(f) in part for a portion of the mark. See TMEP §1212.02(j).
In a first action refusing registration, the examining attorney should suggest, where appropriate, that the applicant amend its application to seek registration under §2(f). For example, this should be done as a matter of course, if otherwise appropriate, in cases where registration is refused under §2(e)(4) on the ground that the mark is primarily merely a surname, and the applicant has recited dates of use that indicate that the mark has been in use in commerce for at least five years.
If the examining attorney determines that an applicant’s evidence is insufficient to establish that the mark has acquired distinctiveness, the examining attorney should suggest, where appropriate, that the applicant submit additional evidence. See In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 220 n.2 (TTAB 1984) (Noting that applicant was specifically invited to seek registration pursuant to §2(f) but, after amending its application to do so, was refused registration on the ground that the mark was incapable of acquiring distinctiveness, the Board stated that, in fairness to applicant, this practice should be avoided where possible).
The examining attorney should not "require" that the applicant submit evidence of secondary meaning. There would be no practical standard for a proper response to this requirement, nor would there be a sound basis for appeal from the requirement. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983) ("Section 2(f) is not a provision on which registration can be refused.").
The examining attorney should not specify the kind or the amount of evidence sufficient to establish that a mark has acquired distinctiveness. It is the responsibility of the applicant to submit evidence to establish that the mark has acquired distinctiveness. See TMEP §1212.01. However, the examining attorney may make a suggestion as to a course of action, if the examining attorney believes this would further the prosecution of the application.
If an application is filed under §2(f) of the Trademark Act and the examining attorney determines that (1) the mark is not inherently distinctive, and (2) the applicant’s evidence of secondary meaning is insufficient to establish that the mark has acquired distinctiveness, the examining attorney will issue a nonfinal action refusing registration on the Principal Register pursuant to the appropriate section of the Trademark Act (e.g., §2(e)(1)), and will separately explain why the applicant’s evidence of secondary meaning is insufficient to overcome the underlying statutory basis for refusal. The examining attorney should suggest, where appropriate, that the applicant submit additional evidence. See TMEP §1212.02(g) concerning the examining attorney’s role in suggesting a claim of distinctiveness under §2(f).
If an application is not filed under §2(f) and the examining attorney determines that the mark is not inherently distinctive, the examining attorney will issue a nonfinal action refusing registration on the Principal Register under the appropriate section of the Act (e.g., §2(e)(1)). The examining attorney should suggest, where appropriate, that the applicant amend its application to claim distinctiveness under §2(f).
Thereafter, if the applicant amends its application to seek registration under §2(f), a new issue is raised as to the sufficiency of the applicant’s evidence of secondary meaning (see TMEP §714.05(a)(i)). The underlying statutory basis for refusal remains the same (i.e., §2(e)(1)), but the issue changes from whether the underlying refusal is warranted to whether the matter has acquired distinctiveness. If the examining attorney is persuaded that a prima facie case of acquired distinctiveness has been established, the examining attorney will approve the application for publication under §2(f). If the examining attorney determines that the applicant’s evidence is insufficient to establish that the matter has acquired distinctiveness, the examining attorney will issue a second nonfinal action repeating the underlying statutory basis for refusal (e.g., §2(e)(1)), and explaining why the applicant’s evidence is insufficient to overcome the stated refusal.
The examining attorney cannot issue a final refusal on the underlying statutory basis of the original refusal, upon an applicant’s initial assertion of a §2(f) claim. The mere assertion of distinctiveness under §2(f) raises a new issue. See In re Educ. Commc’ns, Inc., 231 USPQ 787, 787 n.2 (TTAB 1986) . Even if the applicant has submitted, in support of the §2(f) claim, a statement of five years’ use that is technically defective (e.g., not verified or comprising incorrect language), the assertion of §2(f) distinctiveness still constitutes a new issue.
Exception: The examining attorney may issue a final refusal upon an applicant’s initial assertion of a §2(f) claim if the amendment is irrelevant to the outstanding refusal. See TMEP §714.05(a)(i). See also TMEP §§1212.02(a) and 1212.02(i) regarding situations where it is and is not appropriate to submit a claim of acquired distinctiveness to overcome a refusal.
After the examining attorney has issued a nonfinal action refusing registration on the Principal Register with a finding that the applicant’s evidence of secondary meaning is insufficient to overcome the stated refusal, the applicant may elect to submit additional arguments and/or evidence regarding secondary meaning. If, after considering this submission, the examining attorney is persuaded that the applicant has established a prima facie case of acquired distinctiveness, the examining attorney will approve the application for publication under §2(f). If the examining attorney is not persuaded that the applicant has established a prima facie case of acquired distinctiveness, and the application is otherwise in condition for final refusal, the examining attorney will issue a final refusal pursuant to the appropriate section of the Act (e.g., §2(e)(1)), with a finding that the applicant’s evidence of acquired distinctiveness is insufficient to overcome the stated refusal. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983) .
In any action in which the examining attorney indicates that the evidence of record is insufficient to establish that the mark has acquired distinctiveness, the examining attorney must specify the reasons for this determination. See In re Interstate Folding Box Co., 167 USPQ 241, 243 (TTAB 1970); In re H. A. Friend & Co., 158 USPQ 609, 610 (TTAB 1968).
If matter is generic, functional, or purely ornamental, or otherwise fails to function as a mark, the matter is unregistrable. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) ("If a mark is generic, incapable of serving as a means ‘by which the goods of the applicant may be distinguished from the goods of others’ . . . it is not a trademark and can not be registered under the Lanham Act."); H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), and cases cited therein ("A generic term . . . can never be registered as a trademark because such a term is ‘merely descriptive’ within the meaning of §2(e)(1) and is incapable of acquiring de jure distinctiveness under §2(f). The generic name of a thing is in fact the ultimate in descriptiveness."); see also In re Melville Corp., 228 USPQ 970, 972 (TTAB 1986) (finding BRAND NAMES FOR LESS, for retail store services in the clothing field, "should remain available for other persons or firms to use to describe the nature of their competitive services.").
It is axiomatic that matter may not be registered unless it is used as a mark, namely, "in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods in question." In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) . See, e.g., In re Melville Corp., 228 USPQ at 971 n.2 ("If matter proposed for registration does not function as a mark, it is not registrable in accordance with Sections 1 and 2 of the Act because the preambles of those sections limit registration to subject matter within the definition of a trademark."); In re Whataburger Sys., Inc.,209 USPQ 429, 430 (TTAB 1980) ("[A] designation may not be registered either as a trademark or as a service mark unless it is used as a mark, in such a manner that its function as an indication of origin may be readily perceived by persons encountering the goods or services in connection with which it is used.").
Therefore, where the examining attorney has determined that matter sought to be registered is not registrable because it is not a mark within the meaning of the Trademark Act, a claim that the matter has acquired distinctiveness under §2(f) as applied to the applicant’s goods or services does not overcome the refusal. See, e.g., TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001) ("Functionality having been established, whether MDI’S dual spring design has acquired secondary meaning need not be considered."); In re R.M. Smith, Inc., 734 F.2d 1482, 1484-85, 222 USPQ 1, 3 (Fed. Cir. 1984) ("Evidence of distinctiveness is of no avail to counter a de jure functionality rejection."); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1554 (TTAB 2009) (stating that a product design may become generic and, thus, cannot be registered, regardless of applicant’s claim of acquired distinctiveness); In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984) ("Long use of a slogan which is not a trademark and would not be so perceived does not, of course, transform the slogan into a trademark."); In re Mancino,219 USPQ 1047, 1048 (TTAB 1983) ("Since the refusal . . . was based on applicant’s failure to demonstrate technical service mark use, the claim of distinctiveness under Section 2(f) was of no relevance to the issue in the case.").
As discussed above, evidence of acquired distinctiveness will not alter the determination that matter is unregistrable. However, the examining attorney must review the evidence and make a separate, alternative, determination as to whether, if the proposed mark is ultimately determined to be capable, the applicant’s evidence is sufficient to establish acquired distinctiveness. This will provide a more complete record in the event that the applicant appeals and prevails on the underlying refusal. The examining attorney must also consider whether the applicant’s evidence has any bearing on the underlying refusal. See TMEP §§1209.02–1209.02(b) regarding the procedure for descriptiveness and/or generic refusals.
If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found to be capable. Cf. In re Dietrich,91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be nonfunctional.
See also In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (finding applicant’s evidence relating to public perception of WHY PAY MORE! entitled to relatively little weight, noting that the evidence is relevant to the issue of whether the slogan functions as a mark for applicant’s supermarket services).
An applicant may claim acquired distinctiveness as to certain classes in a multiple-class application, or as to only a portion of the goods/services within a single class. The applicant must clearly identify the goods/services/classes for which distinctiveness is claimed. The standards for establishing acquired distinctiveness are the same whether the claim of distinctiveness pertains to all or to only a portion of the goods/services.
If the examining attorney determines that a claim of distinctiveness as to a portion of the goods/services/classes is appropriate, the examining attorney must ensure that the "§2(f)" field in the Trademark database indicates that the §2(f) claim is restricted to certain goods/services/classes, and that those goods/services/classes are clearly identified in the restriction statement of record in the USPTO database. See the following example, where the applicant is claiming §2(f) for the entire mark, but only as to a portion of the goods/services:
See also the following example, where the applicant is claiming §2(f) in part (not as to the entire mark), restricted to a portion of the goods/services:
A separate limitation statement is also required for claims of §2(f) in part. See TMEP §1212.10.
See also 37 C.F.R. §2.41(b)-(d) (for collective and certification marks).
"To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982).
Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), provides that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register or under the Act of 1905. See TMEP §1212.04(b) as to what constitutes the "same mark," and TMEP §§1212.09–1212.09(b) concerning §1(b) applications.
The rule states that, "in appropriate cases," ownership of existing registrations to establish acquired distinctiveness "may be accepted as sufficient prima facie evidence of distinctiveness," but that the USPTO may, at its option, require additional evidence of distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985).
The following are general guidelines regarding claiming ownership of prior registrations as a method of establishing acquired distinctiveness.
The examining attorney has the discretion to determine whether the nature of the mark sought to be registered is such that a claim of ownership of an active prior registration on the Principal Register for sufficiently similar goods or services is enough to establish acquired distinctiveness. For example, if the mark sought to be registered is deemed to be highly descriptive or misdescriptive of the goods or services named in the application, the examining attorney may require additional evidence of acquired distinctiveness. See In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *9 (TTAB 2020); In re Cordua Rests. LP, 110 USPQ2d 1227, 1234 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
If the term for which the applicant seeks to prove distinctiveness was disclaimed in the prior registration, the prior registration may not be accepted as prima facie evidence of acquired distinctiveness. Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 n.5 (TTAB 2007); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1889-90 (TTAB 2004).
A proposed mark is the "same mark" as a previously registered mark for the purpose of 37 C.F.R. §2.41(a)(1) if it is the "legal equivalent" of such a mark. "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); see also In re Brouwerij Bosteels, 96 USPQ2d 1414, 1423 (TTAB 2010) (finding three-dimensional product packaging trade dress mark is not the legal equivalent of a two-dimensional design logo); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547-48 (TTAB 2010) (finding THE BOLLYWOOD REPORTER is not the legal equivalent of the registered marks THE HOLLYWOOD REPORTER, THEHOLLYWOODREPORTER.COM, and THE HOLLYWOOD REPORTER STUDIO BLU-BOOK); In re Binion, 93 USPQ2d 1531, 1539 (TTAB 2009) (finding BINION and BINION’S are not the legal equivalents of the registered marks JACK BINION and JACK BINION’S); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1477 (TTAB 1988) ("The words GOLDEN RING, while they are used to describe the device, are by no means identical to or substantially identical to the gold ring device trademark."); In re Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) ("[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations, were deemed to be immaterial differences."); In re Loew’s Theatres, Inc., 223 USPQ 513, 514 n.5 (TTAB 1984) , aff’d, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) ("We do not, however, agree with the Examining Attorney that a minor difference in the marks (i.e., here, merely that the mark of the existing registration is in plural form) is a proper basis for excluding any consideration of this evidence under the rule."); In re Flex-O-Glass, Inc., 194 USPQ 203, 205-06 (TTAB 1977) ("[P]ersons exposed to applicant’s registered mark . . . would, upon encountering [applicant’s yellow rectangle and red circle design] . . ., be likely to accept it as the same mark or as an inconsequential modification or modernization thereof . . . . [A]pplicant may ‘tack on’ to its use of the mark in question, the use of the registered mark . . . and therefore may properly rely upon its registration in support of its claim of distinctiveness herein.").
See, e.g., Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991) regarding the concept of "tacking" with reference to prior use of a legally equivalent mark.
When an applicant is claiming §2(f) as to only a portion of its mark, then the previously registered mark must be the legal equivalent of the relevant portion for which the applicant is claiming acquired distinctiveness. See TMEP §1212.02(f) regarding claims of acquired distinctiveness as to a portion of a mark.
The examining attorney must determine whether the goods or services identified in the application are "sufficiently similar" to the goods or services identified in the active prior registration(s) on the Principal Register. See 37 C.F.R. §2.41(a)(1). If the similarity or relatedness is self-evident, the examining attorney may generally accept the §2(f) claim without additional evidence. This is most likely to occur with ordinary consumer goods or services where the nature and function or purpose of the goods or services is commonly known and readily apparent (e.g., a prior registration for hair shampoo and new application for hair conditioner).
If the similarity or relatedness of the goods or services in the application and prior registration(s) is not self-evident, the examining attorney may not accept the §2(f) claim without evidence and an explanation demonstrating the purported similarity or relatedness between the goods or services. This is likely to occur with industrial goods or services where there may in fact be a high degree of similarity or relatedness, but it would not be obvious to someone who is not an expert in the field. See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1478 (TTAB 1988) ("Applicant’s almost total reliance on the distinctiveness which its gold ring device has achieved vis-à-vis rifle scopes and handgun scopes is simply not sufficient by itself to establish that the same gold ring device has become distinctive vis-à-vis binoculars and spotting scopes."); In re Best Prods. Co., 231 USPQ 988, 989 n.6 (TTAB 1986) ("[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations [‘mail order and catalog showroom services’ and ‘retail jewelry store services’], were deemed to be immaterial differences."); In re Owens-Illinois Glass Co., 143 USPQ 431, 432 (TTAB 1964) (holding applicant’s ownership of prior registration of LIBBEY for cut-glass articles acceptable as prima facie evidence of distinctiveness of identical mark for plastic tableware, the Board stated, "Cut-glass and plastic articles of tableware are customarily sold in the same retail outlets, and purchasers of one kind of tableware might well be prospective purchasers of the other."); In re Lytle Eng'g & Mfg. Co., 125 USPQ 308, 309 (TTAB 1960) (holding applicant’s ownership of prior registration of LYTLE for various services, including the planning, preparation, and production of technical publications, acceptable as prima facie evidence of distinctiveness of identical mark for brochures, catalogs, and bulletins).
Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1), states that ownership of an active prior registration "on the Principal Register or under the Act of 1905" may be accepted as prima facie evidence of distinctiveness. Therefore, claims of acquired distinctiveness under §2(f) may not be based on ownership of registrations on the Supplemental Register. See In re Canron, Inc., 219 USPQ 820, 822n.2 (TTAB 1983).
Additionally, a claim of acquired distinctiveness may not be based on a registration that is cancelled or expired. See 37 C.F.R. §2.41(a)(1); In re Info. Builders, Inc., 2020 USPQ2d 10444, at *6 n.19 (TTAB 2020); In re BankAmerica Corp., 229 USPQ 852, 853 (TTAB 1986) . When an examining attorney considers a §2(f) claim based on ownership of one or more prior registrations, the examining attorney must confirm, in the records of the USPTO, that the claimed registrations were issued on the Principal Register or under the Act of 1905 and that they are in full force and effect.
The following language may be used to claim distinctiveness under §2(f) for a trademark or service mark on the basis of ownership of one or more prior registrations:
The mark has become distinctive of the goods and/or services as evidenced by ownership of active U.S. Registration No(s). __________ on the Principal Register for the same mark for sufficiently similar goods and/or services.
If the applicant is relying solely on its ownership of one or more active prior registrations on the Principal Register as proof of acquired distinctiveness, the §2(f) claim does not have to be verified. Therefore, an applicant or an applicant’s attorney may authorize amendment of an application to add such a claim through an examiner’s amendment, if otherwise appropriate.
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), provides that "proof of substantially exclusive and continuous use" of a designation "as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made" may be accepted as prima facie evidence that the mark has acquired distinctiveness as used in commerce with the applicant’s goods or services. See 37 C.F.R. §2.41(a)(2).
The Trademark Act previously required that the relevant five-year period precede the filing date of the application. The Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (1988), revised §2(f) of the Act to provide for a prima facie showing of acquired distinctiveness based on five years’ use running up to the date the claim is made. Under the revised provision, any five-year claim submitted on or after November 16, 1989, is subject to the new time period. This applies even if the application was filed prior to that date.
Section 2(f) of the Act and 37 C.F.R. §2.41(a)(2) state that reliance on a claim of five years’ use to establish acquired distinctiveness "may" be acceptable in "appropriate cases." The USPTO may, at its option, require additional evidence of distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015) (noting that the statute does not require the USPTO to accept five years’ use as prima facie evidence of acquired distinctiveness). Whether a claim of five years’ use will be deemed sufficient to establish that the mark has acquired distinctiveness depends largely on the nature of the mark in relation to the specified goods, services, or classes.
The following are general guidelines regarding the statutorily suggested proof of five years’ use as a method of establishing acquired distinctiveness.
For most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness.
For marks refused under §2(e)(1) or §2(e)(2), the amount of evidence necessary to establish secondary meaning varies. "[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning." In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)); see also Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1368-69, 127 USPQ2d 1041, 1047 (Fed. Cir. 2018). For terms with a greater degree of descriptiveness, statements of length of use alone generally will not be sufficient to establish acquired distinctiveness. See, e.g., In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015) (holding that the Board was within its discretion not to accept applicant’s allegation of five years’ use given the highly descriptive nature of the mark); Spiritline Cruises LLC v. Tour Mgmt. Servs. Inc., 2020 USPQ2d 48324, at *11 (TTAB 2020) (holding applicant’s claim of use since 2003 not sufficient to show the mark CHARLESTON HARBOR TOURS had become distinctive because the term was highly geographically descriptive); In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *10-11 (TTAB 2019) (holding applicant’s claim of use since 2012 not sufficient to show the mark SCOOP had become distinctive for ice cream because other circumstances undercut the significance of this claim of extended use); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *11-12 (TTAB 2019) (holding applicant’s claim of use for the last five years not sufficient to show the mark VIRTUAL INDEPENDENT PARALEGALS had become distinctive for various paralegal services due to the highly descriptive nature of the proposed mark); Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017) (finding, despite applicant’s claim of use since 1991, that much more evidence, especially in the quantity of direct evidence from the relevant purchasing public, would be necessary to show that the designation MEDICAL EXTRUSION TECHNOLOGIES has become distinctive for Applicant’s medical extrusion goods); In re Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) (holding applicant’s evidence of acquired distinctiveness, including a claim of use since 1990, sales of more than 7,650,000,000 units of its goods, and extensive display of its mark CRYSTAL GEYSER ALPINE SPRING WATER on advertising and delivery trucks and promotional paraphernalia, insufficient to establish that the highly descriptive phrase ALPINE SPRING WATER had acquired distinctiveness for applicant’s bottled spring water); In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989) (holding applicant’s sole evidence of acquired distinctiveness, a claim of use since 1975, insufficient to establish that the highly descriptive, if not generic, designation RADIO CONTROL BUYERS GUIDE had become distinctive of applicant’s magazines).
For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product design, overall color of a product, mere ornamentation, and sounds for goods that make the sound in their normal course of operation), evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods, services, or classes would be required to establish distinctiveness. See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009) (noting that "the evidence required is in proportion to the degree of nondistinctiveness of the mark at issue" in relation to a sound mark emitted by cellular telephones in their normal course of operation); In re ic! berlin brillen GmbH, 85 USPQ2d 2021 (TTAB 2008) (configuration of an earpiece for frames for sunglasses and spectacles comprised of three "fingers" near the hinge); In re Black & Decker Corp., 81 USPQ2d 1841, 1844 (TTAB 2006) (finding applicant successfully established acquired distinctiveness for the design of a key head for key blanks and various metal door hardware, where evidence submitted in support included twenty-four years of use in commerce and significant evidence regarding industry practice, such that the evidence showed that "it is common for manufacturers of door hardware to use key head designs as source indicators."); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress (white circle surrounded by blue border) for ear plugs); In re Star Pharm., Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters).
The five years of use in commerce does not have to be exclusive, but must be "substantially" exclusive. 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2). This makes allowance for use by others that may be inconsequential or infringing, which does not necessarily invalidate the applicant’s claim. L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 1352, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999). Thus, when evaluating whether an applicant has had "substantially" exclusive use of a mark, the determination is based on "whether any use by a third party [is] ‘significant’ or whether it [is] merely ‘inconsequential or infringing.’" Galperti, Inc. v. Galperti S.R.L., 17 F.4th 1144, 1147, 2021 USPQ2d 1115, at *2 (Fed. Cir. 2021).
The existence of other applications to register the same mark, or other known uses of the mark, does not automatically eliminate the possibility of using this method of proof, but the examining attorney should inquire as to the nature of such use and be satisfied that it is not significant or does not otherwise nullify the claim of distinctiveness. See Galperti, Inc., 17 F.4th at 1148, 2021 USPQ2d 1115, at *4 ("a significant amount of marketplace use of a term not as a source identifier for those users does tend to undermine an applicant’s assertion that its own use has been substantially exclusive"); Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403, 222 USPQ 939, 940-41 (Fed. Cir. 1984) ("When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances."); In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *40-41 (TTAB 2022) (finding "the widespread use, sale of and discussions/comments about bamboo handbag designs similar to [a]pplicant’s applied-for mark" showed that "[a]pplicant’s use [was] not 'substantially exclusive'"); In re Dimarzio, Inc., 2021 USPQ2d 1191, at *13-25 (TTAB 2021) (finding the examining attorney's evidence of extensive third-party use of applicant's proposed color mark on the same goods showed that applicant's use was not substantially exclusive); Spiritline Cruises LLC v. Tour Mgmt. Servs. Inc., 2020 USPQ2d 48324, at *11 (TTAB 2020) (finding "the substantially non-exclusive use of CHARLESTON HARBOR TOURS . . . interfere[d] with the relevant public’s perception of the designation as an indicator of a single source"); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *21 (TTAB 2020) ("[w]hile absolute exclusivity is not required for a Section 2(f) registration, . . . the widespread use of other substantially similar [designs] . . . is inconsistent with the ‘substantially exclusive’ use required by the statute"); Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 USPQ2d 460354, at *25 (TTAB 2019) (finding evidence of third-party use of the proposed mark showed that registrant’s use had not been "substantially exclusive either at the time of registration or thereafter"); In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1024 (TTAB 2017) (finding that "the presence in the market of yellow-packaged cereals from various sources . . . would tend to detract from any public perception of the predominantly yellow background as a source-indicator pointing solely to Applicant"); Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1404 (TTAB 2016) (finding that, because of widespread third-party uses of the surname Ayoub in connection with rug, carpet and flooring businesses, applicant's use of the applied-for mark, AYOUB, was not "substantially exclusive" and thus the mark had not acquired distinctiveness in connection with applicant’s identified carpet and rug services); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1408 (TTAB 2009) (finding opposer’s contemporaneous use of the mark in connection with services closely related to applicant’s goods rose to the level necessary to rebut applicant’s contention of substantially exclusive use); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1682-83 (TTAB 2007) (finding substantial use of mark by opposer’s parent company and additional use of mark by numerous third parties "seriously undercuts if not nullifies applicant’s claim of acquired distinctiveness."); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1357-58 (TTAB 1989) ("[T]he existence of numerous third party users of a mark, even if junior, might well have a material impact on the Examiner’s decision to accept a party’s claim of distinctiveness."); Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) ("[L]ong and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive.").
The use of the mark during the five years must also be continuous, without a period of "nonuse" or suspension of trade in the goods or services in connection with which the mark is used. 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2).
The substantially exclusive and continuous use must be "as a mark." 15 U.S.C. §1052(f); see In re Craigmyle, 224 USPQ 791, 793 (TTAB 1984) (finding registrability under §2(f) not established by sales over a long period of time where there was no evidence that the subject matter had been used as a mark); In re Kwik Lok Corp., 217 USPQ 1245, 1248 (TTAB 1983) (holding declarations as to sales volume and advertising expenditures insufficient to establish acquired distinctiveness. "The significant missing element in appellant’s case is evidence persuasive of the fact that the subject matter has been used as a mark.").
If the applicant chooses to seek registration under §2(f), 15 U.S.C. §1052(f), by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness. The following is the suggested format for a claim for a trademark or service mark, for a certification mark, for a collective membership mark, and for a collective trademark or collective service mark, based on 37 C.F.R. §2.41(a)(2), (b)(2), (c)(2), and (d)(2).
For a trademark or service mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
For a certification mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of the certified goods/services through the authorized users' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
For a collective membership mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of indicating membership in the collective membership organization through the members' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
For a collective trademark or collective service mark, the claim of distinctiveness should read as follows, if accurate:
The mark has become distinctive of the goods/services through the applicant's members' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
The claim of five years of use is required to be supported by a properly signed affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.41(a)(2), (b)(2), (c)(2), (d)(2). The affidavit or declaration must be signed by a person properly authorized to sign on behalf of applicant under 37 C.F.R. §2.193(e)(1). See TMEP §611.03(a).
The following are guidelines regarding the form and language appropriate for a claim of five years of use:
Under Trademark Rule 2.41(a)(3), 37 C.F.R. §2.41(a)(3), an applicant may submit affidavits, declarations under 37 C.F.R. §2.20, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce that may lawfully be regulated by the U.S. Congress, advertising expenditures in connection with such use, letters, or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services.
Establishing acquired distinctiveness by actual evidence was explained as follows in In re Owens-Corning Fiberglas Corp.:
An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.
774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985). The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services depends on the nature of the mark and the circumstances surrounding the use of the mark in each case. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988); Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970) ; In re Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960) ; In re Cap. Formation Couns., Inc., 219 USPQ 916, 918 (TTAB 1983) .
Evidence that only shows a mark used in conjunction with other wording may be insufficient to show that the mark has acquired distinctiveness. See In re Mogen David Wine Corp., 372 F.2d 539, 542, 152 USPQ 593, 595-96 (C.C.P.A. 1967) (holding evidence of a bottle design failed to prove secondary meaning where advertising depicting the bottle design always featured applicant’s word mark); In re Franklin Cnty. Hist. Soc’y, 104 USPQ2d 1085, 1093 (TTAB 2012) (noting none of applicant’s evidence showed use of the proposed mark "CENTER OF SCIENCE AND INDUSTRY" without the acronym "COSI," while other evidence only used the acronym to refer to applicant’s services).
The following sections provide examples of types of evidence that have been used, alone or in combination, to establish acquired distinctiveness. No single evidentiary factor is determinative. The value of a specific type of evidence and the amount necessary to establish acquired distinctiveness will vary according to the facts of the specific case. In addition, see TMEP §1212.01 regarding the factors considered when determining whether a mark has acquired distinctiveness.
Long-term use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness. See, e.g., In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (holding evidence of long use insufficient to establish acquired distinctiveness of FISH FRY PRODUCTS where evidence involved uses of LOUISIANA FISH FRY PRODUCTS); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *6-7 (TTAB 2020) (finding §2(f) claim based on applicant’s use since 2000 not dispositive, even if the use was considered "substantially exclusive," due to the highly descriptive nature of applicant’s mark and the nature and number of third-party descriptive uses in the record); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *22 (TTAB 2019) (finding applicant’s evidence of use since 1998 of an umbrella trade dress design "supports a finding of acquired distinctiveness to some extent because there is no evidence that competitive double canopy umbrellas had a mesh design between 1998 and 2017"); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *15 (TTAB 2019) (finding applicant’s evidence of continuous use of ALGAE WAFERS since at least Oct. 31, 1991 and advertisment of the goods sold under the mark since at least Oct. 1992 did not convince the Board that "ordinary purchasers of fish food have come to view that term primarily as an indicator of source"); In re Uncle Sam Chem. Co., 229 USPQ 233, 235 (TTAB 1986) (holding §2(f) claim of acquired distinctiveness persuasive where applicant had submitted declaration of its president supporting sales figures and attesting to over eighteen years of substantially exclusive and continuous use).
To support a §2(f) claim, use of the mark must be use in commerce, as defined in 15 U.S.C. §1127. See TMEP §§901–901.04 regarding what constitutes use in commerce.
Large-scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used. However, proof of an expensive and successful advertising campaign is not in itself enough to prove secondary meaning. Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357, 361 n.2, 221 USPQ 302, 305 n.2 (2d Cir. 1983) (citing Am. Footwear Corp. v. Gen. Footwear Co., 609 F.2d 655, 663, 204 USPQ 609, 615-16 (2d Cir. 1979)); see In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (finding evidence of sales and advertising expenditures insufficient to establish acquired distinctiveness of FISH FRY PRODUCTS where evidence involved uses of LOUISIANA FISH FRY PRODUCTS); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (finding §2(f) claim based on annual sales under the mark of approximately eighty-five million dollars, and annual advertising expenditures in excess of ten million dollars – two million of which were spent on promotions and promotional items which included the phrase THE BEST BEER IN AMERICA – insufficient to establish distinctiveness, in view of the highly descriptive nature of the proposed mark).
The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source. In re Sausser Summers, PC, 2021 USPQ2d 618, at *23 (TTAB 2021); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB 2016) (citing In re Redken Labs., Inc., 170 USPQ 526, 529 (TTAB 1971)). The examining attorney must examine the advertising material to determine how the term is being used, the commercial impression created by such use, and what the use would mean to purchasers. In re Redken Labs., Inc., 170 USPQ at 528-29 (holding §2(f) evidence insufficient to establish acquired distinctiveness of THE SCIENTIFIC APPROACH for lectures concerning hair and skin treatment, notwithstanding ten years of use, over $500,000 in promotion and sponsorship expenses, and the staging of over 300 shows per year where advertising and promotional material showed only descriptive usage of applied-for mark); see In re Jasmin Larian, LLC, 2022 USPQ2d 290, at *42-44 (TTAB 2022) (finding no "look for" advertising in the record but rather applicant displayed its product design for handbags in advertising without any visible label or identifier, which caused some consumers to mistakenly associate the handbag with applicant's related business entity); In re Dimarzio, Inc., 2021 USPQ2d 1191, at *26-28 (TTAB 2021) (finding applicant's extensive advertising and promotional materials featuring prominent images of the applied-for color mark on the goods insufficient because the color was "not touted at all in [a]pplicant’s advertising," and was just one of many colors offered for applicant's goods, which strongly undercut applicant's claims "that the color cream [was] promoted as a mark and would be perceived as one by consumers"); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *25 (TTAB 2019) (holding evidence of acquired distinctiveness deficient in part because "[a]pplicant’s consumer facing advertisements, like its ones to the trade, do little more than show the products, and they do not establish that consumers associate the features of the applied-for trade dress mark with [a]pplicant"); In re Chevron Intell. Prop. Grp. LLC, 96 USPQ2d 2026, 2031 (TTAB 2010) (finding evidence of acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of pole spanner design as a service mark); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding absence of "look for" advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1408 (TTAB 2009) (sustaining opposition on the ground that sound mark had not acquired distinctiveness in part because applicant failed to provide evidence corroborating that the mark was used in advertisements in such a way that it would be recognized as a source identifier for cellular telephones); In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008) (affirming refusal to register product configuration for spectacles and sunglasses, as the applicant failed to prove acquired distinctiveness chiefly because of the "absence of evidence of the advertising and/or promotion by the applicant of the earpiece design as a trademark"); In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (affirming refusal to register OFFICE MOVERS, INC., for moving services, notwithstanding §2(f) claim based on, inter alia, evidence of substantial advertising expenditures. "There is no evidence that any of the advertising activity was directed to creating secondary meaning in applicant’s highly descriptive trade name."); In re Kwik Lok Corp., 217 USPQ 1245, 1247-48 (TTAB 1983) (holding evidence insufficient to establish acquired distinctiveness for configuration of bag closures made of plastic, notwithstanding applicant’s statement that advertising of the closures involved several hundred thousands of dollars, where there was no evidence that the advertising had any impact on purchasers in perceiving the configuration as a mark); cf. In re Haggar Co., 217 USPQ 81, 84 (TTAB 1982) (holding background design of a black swatch registrable pursuant to §2(f) for clothing where applicant had submitted, inter alia, evidence of "very substantial advertising and sales," the Board finding the design to be, "because of its serrated left edge, something more than a common geometric shape or design").
If the applicant prefers not to specify the extent of its expenditures in promoting and advertising goods and services under the mark because this information is confidential, the applicant may indicate the types of media through which the goods and services have been advertised (e.g., national television) and how frequently the advertisements have appeared.
Affidavits or declarations that assert recognition of the mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the affidavits or declarations depends on the statements made and the identity of the affiant or declarant. See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding conclusionary declaration from applicant’s vice-president insufficient without the factual basis for the declarant’s belief that the design had become distinctive). Proof of distinctiveness also requires more than proof of the existence of a relatively small number of people who associate a mark with the applicant. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings."); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding sixteen declarations of little persuasive value, as they were nearly identical in wording and only one of the declarants was described as an end consumer); In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB 1987) (finding affidavit of applicant’s counsel expressing his belief that the mark has acquired secondary meaning of "no probative value whatsoever" because, among other reasons, the statement is subject to bias); In re Petersen Mfg. Co., 2 USPQ2d 2032, 2035 (TTAB 1987) (finding declarations from customers which stated that designs used by applicant indicate to the declarant that the applicant is the source of the goods, but which did not refer to or identify the designs with any specificity, not persuasive); In re Bose Corp., 216 USPQ 1001, 1005 (TTAB 1983), aff’d, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (deeming retailer’s statement that he has been in contact with many purchasers of loudspeaker systems of whom a substantial number would recognize the depicted design as originating with applicant competent evidence of secondary meaning); In re Flex-O-Glass, Inc., 194 USPQ 203, 206 (TTAB 1977) ("[T]he fact that the affidavits may be similar in format and expression is of no particular significance . . . since the affiants have sworn to the statements contained therein.").
Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness. See In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *14-15 (TTAB 2019) (citing Schlafly v. St. Louis Brewery, LLC, 909 F.3d 420, 424, 128 USPQ2d 1739, 1743 & n.2 (Fed. Cir. 2018)) ("Consumer surveys can, when conducted properly, be a form of direct evidence of acquired distinctiveness."); Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43, 59 USPQ2d 1720, 1730 (1st Cir. 2001) ("Although survey evidence is not required, ‘it is a valuable method of showing secondary meaning.’" (quoting I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 42, 49 USPQ2d 1225, 1235 (1st Cir. 1998))).
To establish acquired distinctiveness, the survey must show that the consuming public views the proposed mark as an indication of the source of the product or service. See In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *11-12 (finding survey did not show the nature of the association a consumer perceived between the proposed mark and applicant and the other companies identified in survey answers as there were no follow-up questions inquiring as to the reason for identifying applicant or another company that would have established what the respondents understood); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1402-03 (TTAB 2009) (finding survey did not provide evidence of acquired distinctiveness as it was unclear if respondents associated the sound mark with applicant’s goods or opposer’s services). Moreover, the survey should reveal that the consuming public associates the proposed mark with a single source, and not that the applicant is the first among many parties associated with the designation. See J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §15.42 (5th ed. June 2021) (citing Am. Flange & Mfg. Co. v. Rieke Corp., 80 USPQ2d 1397, 1415 (TTAB 2006) , withdrawn on other grounds, 90 USPQ2d 1127 (TTAB 2009)); see also In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *11 ; Brit. Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1202 (TTAB 1993) (finding survey did not provide convincing proof that respondents believed all black engines came from the same source), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994).
To have any probative value, a survey must be conducted in accordance with accepted principles of survey research. See, e.g., In re Van Valkenburgh, 97 USPQ2d 1757, 1767 (TTAB 2011); Zimmerman v. Nat’l Ass’n of Realtors, 70 USPQ2d 1425, 1435-36 (TTAB 2004); In re Wilcher Corp., 40 USPQ2d 1929, 1934 (TTAB 1996) (citing Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1582 n.4 (TTAB 1987)); see also USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2307 n.6, 2020 USPQ2d 10729, at *7 n.6 (2020); TBMP §1208; McCarthy, supra, §§32:158, 32:170-72. The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein. In re Van Valkenburgh, 97 USPQ2d at1757, 1767 (finding "no basis on which to conclude that the survey is based on scientifically valid principles" where the survey consisted of questionnaires distributed to an unknown number of people who filled them out and mailed them back to applicant’s counsel); see In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (deeming applicant’s Internet poll on name recognition unreliable, where the poll did not attempt to prevent visitors from voting more than once or to prevent interested parties such as friends or associates or employees of the applicant from voting multiple times, and the poll results did not indicate the number of actual participants); In re Hotels.com, L.P., 87 USPQ2d 1100, 1109–10 (TTAB 2008) (finding applicant’s survey entitled to no probative weight as to the public’s perception of HOTELS.COM due to flaws including the order of the questions and an assumption that consumers understood the difference between a brand name and domain name), aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009). Therefore, information regarding how a survey was conducted (the entire survey report, including all data and/or statistics gathered regarding participants responses), the complete questionnaire provided to participants, the criteria for selecting participants, the number of participants surveyed, all the individual responses to the questionnaire, the geographic scope of the survey, and an explanation of the survey method and/or design employed may assist the examining attorney in determining the probative weight of such evidence.
For a survey to be probative, the proper universe of participants must be surveyed. In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *12 (where identification broadly identified goods as fish food, survey universe was too narrow because it did not include people who purchased fish food for fish other than tropical fish) (citing Omaha Steaks Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1322, 128 USPQ2d 1686, 1692 (Fed. Cir. 2018) (where identification of goods broadly identified goods as meat and beef, survey universe too narrow because it eliminated from survey meat eaters who buy their meat from sources other than plaintiff); In re FCA US LLC, 126 USPQ2d 1214, 1226 (TTAB 2018) (survey was of limited relevance because it did not consider the entire universe of customers for automobiles, trim and structural parts but was limited to customers for vehicles capable of off-road driving); Sheetz of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341, 1363 n.41, 1371 (TTAB 2013) (finding survey universe too narrow and stating "[b]ased on the description of goods, the proper survey universe should include all people who purchase and eat sandwiches (defined to exclude only hot dogs)"; "[t]here may be an overreliance on patrons of 'fast food' establishments that skews the results because the proper universe is all consumers who purchase and eat sandwiches.")).
Further, the Trademark Trial and Appeal Board has given little weight to surveys that do not include an education or pre-testing portion regarding the difference between a generic term and a trademark or such portion is insufficient to educate respondents. See Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1198-99 (TTAB 2017); Sheetz of Del., Inc. v. Dr.’s Assocs. Inc., 108 USPQ2d 1341, 1361-62 (TTAB 2013); see also In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *11 (TTAB 2019) (citing David H.B. Bednall, Color, Champagne, & Trademark Secondary Meaning Survs.: Devilish Detail, 102 Trademark Rep. 967, 999 (July-Aug. 2012)); Zimmerman, 70 USPQ2d at 1435-36.
Evidence of acquired distinctiveness may be sufficient if it shows that a substantial portion of the consuming public associates the proposed mark with a single source. See Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125, 16 USPQ2d 1289, 1292 (4th Cir. 1990) (quoting Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301 F.2d 156, 161, 133 USPQ 127, 131 (4th Cir. 1962)); McCarthy, supra §§15.45, 32.190; see also In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed. Cir. 1985) (noting "the results show a syndetic relationship between the color ‘pink’ and Owens-Corning Fiberglas in the minds of a significant part of the purchasing public"). As noted by the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit), "proof of distinctiveness requires more than proof of the existence of a relatively small number of people" who associate the proposed mark with the applicant. Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 862, 132 USPQ 627, 633 (C.C.P.A. 1962) . Although all evidence must be reviewed on a case-by-case basis, generally, survey results showing less than 10% consumer recognition are insufficient to establish secondary meaning, and results over 50% are sufficient to establish secondary meaning. See id. (finding 10% insufficient to establish secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d at 1127–28, 227 USPQ at 424–25 (finding 50% probative in establishing secondary meaning given the totality of the evidence); McCarthy, supra §§15.45, 32.190. However, the probative value of a survey is significantly weakened, despite consumer recognition rates greater than 50%, if there are flaws in the way the survey is conducted. See Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1569–71 (TTAB 2009) .
When the applicant is the only source of the goods or services, use alone does not automatically represent trademark recognition and acquired distinctiveness. See, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 440, 126 USPQ 362, 364 (C.C.P.A. 1960) ; In re Mortg. Bankers Ass’n of Am., 226 USPQ 954, 956 (TTAB 1985) ; In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983); In re Meier’s Wine Cellars, Inc., 150 USPQ 475, 475 (TTAB 1966) ; In re G. D. Searle & Co., 143 USPQ 220, 223 (TTAB 1964) , aff’d,360 F.2d 650, 149 USPQ 619 (C.C.P.A. 1966).
Similarly, evidence of intentional copying of a product design is not probative of acquired distinctiveness. "Where the proposed mark is a product design, the copier may be attempting to exploit a desirable product feature, rather than seeking to confuse customers as to the source of the product." In re Van Valkenburgh, 97 USPQ2d 1757, 1768 (TTAB 2011) .
State trademark registrations are of relatively little probative value. See, e.g., In re Vico Prods. Mfg. Co., 229 USPQ 364, 370 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986) ("While applicant’s design may be registrable under the provisions of California trademark law, it is the federal trademark statute and the cases interpreting it by which we must evaluate the registrability of applicant’s asserted mark."); In re Craigmyle, 224 USPQ 791, 794 (TTAB 1984) (finding California trademark registration not controlling with respect to federal registrability).
The fact that a device is the subject of a design patent does not, without more, mean that it functions as a mark or has acquired distinctiveness. In re Vico Prods. Mfg. Co., 229 USPQ 364, 370 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986) (citing In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984).
Acquiescence to demands of competitors to cease use of a term can be equally viewed as simply a desire to avoid litigation. See, e.g., In re Wella Corp., 565 F.2d 143, 144 n.2, 196 USPQ 7, 8 n.2 (C.C.P.A. 1977) ; In re Consol. Cigar Corp., 13 USPQ2d 1481, 1483 (TTAB 1989) .
An applicant may present evidence that an applied-for mark has acquired distinctiveness because it is a new member of a recognized family of marks. See In re LC Trademarks, Inc., 121 USPQ2d 1197, 1202-04 (TTAB 2016). To establish acquired distinctiveness, the evidence must show (1) that a family of marks exists in that the claimed collection of marks shares a recognizable common characteristic that is distinctive and has been promoted in such a way as to create recognition among the purchasing public as a source indicator for the goods/services and (2) that the purchasing public would perceive the applied-for mark as part of that family of marks and thus as a source indicator. See id.; cf. TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1428 (TTAB 2018) (finding that the shared element in petitioner’s marks was so commonly used by others that it does not constitute a distinguishing feature upon which a family-of-marks claim could be based).
In rare cases, evidence of the creation of intentional parodies and copies of an otherwise nondistinctive mark may be significant in assessing whether the mark has successfully achieved public recognition as a source indicator. In In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018), the Board found that parodies of applicant’s service on a national weekly television show, using an almost identical graphical display of applicant’s composite marks, constituted "highly unusual and highly significant evidence" that was "highly probative of acquired distinctiveness." Id. at 1076. The record also included evidence of unauthorized copying of the marks. Based on the totality of this unique evidence, the Board found that, when all the elements of the composites were taken together, the marks had acquired distinctiveness. Id. at 1078. The Board noted, however, that the finding of acquired distinctiveness was limited to the particular display of the composite marks as a whole, and did not extend to the individual components taken separately, or to anything less than the whole. Id.
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 on the Principal Register 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.
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) .
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) .
See also In re Olin Corp., 124 USPQ2d 1327, 1333-34 (TTAB 2017); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009). To satisfy the first element, the applicant must establish acquired distinctiveness as to the other goods or services by the following means:
In re Olin Corp., 124 USPQ2d at 1334; 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 at 1539 (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.
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.
Currently, when a mark is registered under §2(f), the USPTO prints a "2(f)" notation in the Official Gazette and on the certificate of registration. The examining attorney must ensure that the §2(f) claim has been entered into the Trademark database, so that it will be printed in the Official Gazette and on the certificate of registration. Similarly, when a claim of §2(f) in part is appropriate, the examining attorney must ensure that the record reflects that the §2(f) claim applies only to a portion of the mark and that the relevant portion is correctly identified in the limitation statement. See TMEP §817 regarding preparation of an application for publication or registration.
For example, if the mark is SOFTSOAP for non-medicated liquid soap and the applicant has successfully shown acquired distinctiveness, the examining attorney must ensure that the "§2(f)" field in the Trademark database reads as follows before approving the mark for publication:
Similarly, if the mark is SOFTSOAP combined with an inherently distinctive design for non-medicated liquid soap and the applicant has successfully shown acquired distinctiveness as to the wording in the mark, the examining attorney must ensure that the "§2(f)" field in the Trademark database reads as follows before approving the mark for publication:
If the applicant has successfully shown acquired distinctiveness as to non-English wording in the mark, or as to non-English wording that has been transliterated from non-Latin characters, the examining attorney must ensure that the §2(f) claim is entered as shown in the following examples.
If the mark is KONE UNIPOWER for specific machine parts, the term KONE means "machine or engine," and the applicant has successfully shown acquired distinctiveness as to the term KONE, the examining attorney must ensure that the "§2(f)" field in the Trademark database reads as follows before approving the mark for publication:
Similarly, in the mark shown below, where the non-Latin characters transliterate to "ME-RI-LAND-HAN-IN-SI-MIN-HYUP-IIOY," which means
"MARYLAND, KOREAN AMERICAN LEAGUE," and the mark is used for organizing and conducting community service projects and programs to promote cultural and social awareness, if the applicant has successfully shown acquired distinctiveness as to the portion of the mark comprised of the non-Latin characters, the examining attorney must ensure that the "§2(f)" field in the Trademark database reads as follows before approving the mark for publication:
In the past, the USPTO did not print §2(f) notations on the registration. Therefore, the absence of a "§2(f)" notation on an older registration does not necessarily mean that the mark was registered without a §2(f) claim.
A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. A disclaimer may be included in an application as filed or may be added by amendment, e.g., to comply with a requirement by the examining attorney.
The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant’s right with respect to certain elements in the mark. As stated in Horlick’s Malted Milk Co. v. Borden Co., 295 F. 232, 234 (D.C. Cir. 1924) (citing Estate of P. D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538, 544 (1920)):
[T]he fact that a mark contains descriptive words is not enough to warrant a refusal to register it. Unless it consists only of such words, it may not be refused a place on the registry of the Patent Office.
The significance of a disclaimer is conveyed in the following statement:
As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.
Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954).
A disclaimer may be limited to pertain to only certain classes, or to only certain goods or services.
There was no statutory authority for disclaimer prior to 1946. As various court decisions were rendered, USPTO practice fluctuated from, first, registering the composite mark without a qualifying statement; later, requiring a statement in the application disclaiming the unregistrable matter in the mark; and, finally, requiring removal of the unregistrable matter from the mark on the drawing. This fluctuation ended with the decision of Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920), in which the United States Supreme Court held that to require the removal of descriptive matter from a composite mark was erroneous, and commended the practice of a statement of disclaimer. Thus, the practice of disclaimer was established officially in the USPTO, although still without statutory support.
The Trademark Act of 1946 created a statutory basis for the practice of disclaimer in §6, 15 U.S.C. §1056.
When first incorporated in the Trademark Act in 1946, §6 stated that the Director shall require unregistrable matter to be disclaimed. Under the impetus of the mandatory word "shall," it became customary to require a disclaimer for every occurrence, in any type of combination, of every term or symbol which by itself might be refused registration in the first instance under the 1946 Act.
In 1962, §6 was amended to state that the Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. The change from "shall" to "may" justifies the exercise of greater discretion by examining attorneys in determining whether a disclaimer is necessary. See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (stating that registration can be conditioned on disclaimer of an unregistrable component of a mark).
Examining attorneys should keep in mind the basic purpose of disclaimers, which is to indicate in the record that a significant element of a composite mark is not being appropriated apart from the composite. The examining attorney must not require that an element of a mark be disclaimed when a disclaimer would be unnecessary, e.g., when the form or degree of integration of an element in the composite makes it obvious that no claim is being made in any element apart from the composite.
Failure to comply with a requirement to disclaim was held to be a basis for refusal to register before the Act of 1946. See In re Am. Cyanamid & Chem. Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938) . Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) . Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording "may require the applicant to disclaim," registration may be refused if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re UST Global (Sing.) Pte. Ltd., 2020 USPQ2d 10435, at *2 (TTAB 2020); In re Nat'l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977).
If an applicant fails to comply with the examining attorney’s requirement for a disclaimer, the examining attorney must make the requirement final if the application is otherwise in condition for a final action.
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), was amended in 1962 to add the sentence, "An applicant may voluntarily disclaim a component of a mark sought to be registered." Disclaimers volunteered by applicants generally should conform to the guidelines set forth in this Manual. See TMEP §§1213.08–1213.08(d).
In In re MCI Commc’ns Corp., 21 USPQ2d 1534 (Comm’r Pats. 1991), the Commissioner held that §6(a) of the Act permits an applicant to disclaim matter voluntarily, regardless of whether the matter is registrable or unregistrable. The Commissioner specifically overruled all previous USPTO authority holding otherwise. Id. at 1539. (Previous practice prohibited the entry of disclaimers of registrable components of marks.) Therefore, if an applicant offers a disclaimer of any matter in a mark, the USPTO will accept the disclaimer.
The MCI decision states emphatically that the entry of a voluntary disclaimer does not render registrable a mark that is otherwise unregistrable under relevant sections of the Trademark Act, such as §2(d) or §2(e). Id. at 1538. The examining attorney must evaluate the entire mark, including any disclaimed matter, to determine registrability. Id. See In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) (finding voluntary disclaimer of "RSI" has no legal effect on the issue of likelihood of confusion because it is not a weak term). Furthermore, the MCI decision states that the applicant may not disclaim the entire mark. MCI, 21 USPQ2d at 1538. See TMEP §1213.06.
An applicant may volunteer a disclaimer in the mistaken belief that a disclaimer would be required when, in fact, USPTO policy would not require a disclaimer. If this appears to be the case, the examining attorney must offer the applicant the opportunity to withdraw the disclaimer.
If it is necessary to communicate with the applicant about another matter, the examining attorney must state in the Office action that the disclaimer appears to be unnecessary, and inquire as to whether the applicant wants to withdraw the disclaimer. If the applicant does not respond to the inquiry regarding the unnecessary disclaimer, and the application is otherwise in condition for final action or approval for publication for opposition or registration, the examining attorney must enter a Note to the File regarding the disclaimer and issue the final action or approve the application for publication for opposition or registration, as appropriate, without deleting the disclaimer.
In applications under §1 or §44, if it is otherwise unnecessary to issue a first Office action, the inquiry may be made by telephone or email. If the applicant wants to delete the disclaimer, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or email message (applicant should be given at least three business days), the examining attorney must enter an appropriate Note to the File and approve the application for publication for opposition or registration without deleting the disclaimer.
In applications under §66(a), if it is otherwise unnecessary to issue a first Office action, the examining attorney should issue a "no-call" Examiner’s Amendment informing the applicant that the disclaimer appears to be unnecessary and inquiring as to whether the applicant wants to withdraw the disclaimer. (This is meant only to provide information to the applicant and does not "amend" the application. An examiner’s amendment may not be issued as a first Office action because the IB will not accept such amendments.) The examining attorney should then approve the application for publication for opposition without deleting the disclaimer. It is not necessary to wait for the applicant to respond.
An applicant may argue the merits of an examining attorney’s requirement for a disclaimer and, in the alternative, consent to entry of the disclaimer. In such circumstances, submission of the disclaimer does not constitute a concession that the matter sought to be registered is not inherently distinctive or registrable. See In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012) . Thus, when an applicant submits a disclaimer in the alternative, while maintaining that the wording at issue is not descriptive, the disclaimer requirement is not moot. If the examining attorney finds the disclaimer acceptable, the applicant must be given the option of entering the disclaimer in the record or going forward with appeal of the underlying issue of whether the wording subject to the requirement is merely descriptive. This should be done by telephone or email, with a Note to the File in the record indicating the applicant’s decision, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or email, the examining attorney must maintain the requirement, or issue a final Office action requiring the disclaimer, as appropriate. Id. If the applicant elects to enter the disclaimer in the record and not appeal the requirement, then the disclaimer constitutes a concession that the matter is not inherently distinctive or registrable.
See TMEP §1212.02(c) regarding a claim, in the alternative, that matter sought to be registered has acquired distinctiveness under §2(f).
A "composite" mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. An unregistrable component of a composite mark is subject to disclaimer. However, if a composite mark (or portion thereof) is "unitary," an individual component of the mark (or of the unitary portion) that would otherwise be unregistrable need not be disclaimed. See TMEP §§1213.05–1213.05(g)(iv).
The same principles apply to disclaimer of an unregistrable component of a composite mark, whether the mark is a combination of wording and designs or consists entirely of wording or entirely of designs.
Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter. Section 6 of the Act referred initially to "unregistrable matter" and, since the 1962 amendment, now refers to "an unregistrable component."
Typically, an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, matter that is merely descriptive or deceptively misdescriptive of the goods or services, or matter that is primarily geographically descriptive of the goods or services.
Office practice does not require disclaimer of a surname. Ex parte Norquist Prods., Inc., 109 USPQ 399 (Comm’r Pats. 1956) (finding disclaimer of "NORQUIST" unnecessary in application to register mark comprising "NORQUIST CORONET" on an oval background featuring a coronet, for tables and chairs). In that decision, the Commissioner stated as follows:
Section [2(e)(4)] of the statute does not contemplate the dissection of a composite mark to determine whether a word which constitutes an integral part of the mark is primarily merely a surname. Rather, it contemplates an examination of the mark in its entirety and an evaluation of the commercial impression created by the entire mark. A word which is primarily merely a surname may lose that significance when it appears in a distinctive composite.
Id.at 400. Moreover, the voluntary disclaimer of a surname is not an appropriate response to a surname refusal. If the addition of other registrable matter creates a composite mark with an overall impression that is not primarily merely that of a surname, then no refusal is made under §2(e)(4). If the additional matter is minimal or unregistrable, then the mark is primarily merely a surname and refusal under §2(e)(4) of the Act, 15 U.S.C. §1052(e)(4), must be made. See In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (holding LIQUORE MARTINONI (stylized) for liqueur primarily merely a surname, with "liquore" being the Italian word for "liqueur"). See TMEP §§1211.01(b)–1211.01(b)(viii) regarding the combination of a surname with additional matter.
In cases where registration of a mark is barred under the Trademark Act (e.g., under §§2(a), 2(b), 2(c), 2(d), and 2(e)(3)), a disclaimer of an unregistrable component will not render the mark registrable . See, e.g., Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Soc'y, 224 USPQ 798, 808 (TTAB 1984) ("While the disclaimer is appropriate to indicate that respondent claims no proprietary right in the disclaimed words, the disclaimer does not affect the question of whether the disclaimed matter deceives the public, since one cannot avoid the Section 2(a) deceptiveness prohibition by disclaiming deceptive matter apart from the mark as a whole."). See TMEP §1203.02 regarding disclaiming deceptive matter, TMEP §1204.04(a) about disclaiming flags or insignia, TMEP §§1210.05(d)(ii) and 1210.06(a)–(b) regarding disclaimer of geographic terms in composite marks, and TMEP §1213.10 concerning disclaimers with regard to likelihood of confusion.
If a mark is comprised in part of matter that, as applied to the goods or services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register. If, however, matter that would otherwise be generic or would not function as a mark is part of a unitary mark or part of a separable unitary element of a mark, the examining attorney should not require a disclaimer of the matter. See TMEP §§1213.05–1213.05(g)(iv).
See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). See also In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, as stated in In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (citing In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977) ), "Section 6 is equally applicable to the Supplemental Register." See Wella, 565 F.2d 143, 196 USPQ 7 (finding mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) ("Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.").
An accurate pictorial representation of descriptive matter is equivalent to the written expression and, therefore, must be disclaimed pursuant to the same rules applicable to merely descriptive wording. See Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504, 511-12 (TTAB 1978) (finding thistle design synonymous to the word "thistle," which is used in a descriptive sense to designate a class of sailboats).
A properly worded disclaimer would read as follows:
No claim is made to the exclusive right to use the design of ____ apart from the mark as shown.
No disclaimer of highly stylized pictorial representations of descriptive matter should be required because the design element creates a distinct commercial impression. See In re LRC Prods. Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (holding outline of two gloved hands arbitrary and fanciful), and cases cited therein. Note: A map of the world or a depiction of a globe generally is not considered the pictorial equivalent of the terms "INTERNATIONAL," "GLOBAL," or "WORLDWIDE."
Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) or the familial business structure of an entity (e.g., "& Sons" or "Bros.") must be disclaimed because an entity designation has no source-indicating capacity. See In re Piano Factory Grp., Inc., 85 USPQ2d 1522 (TTAB 2006) (holding VOSE & SONS primarily merely a surname); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (finding "PRESS," as applied to a printing or publishing establishment, "is in the nature of a generic entity designation which is incapable of serving a source-indicating function"); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("’PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company"); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) ("the element ‘INC.’ [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark evaluation, to have no source indication or distinguishing capacity" (citing In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) )). Further, such designations must also be disclaimed in marks seeking registration on the Principal Register under §2(f) or on the Supplemental Register.
However, a disclaimer should not be required when the entity designation is used in an arbitrary manner and thus has trademark significance (e.g., THE LTD. or KIDS INCORPORATED for clothing or CHUCKLE BROS. for a comic strip). See Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as "a known word used in an unexpected or uncommon way"); TMEP §1209.01(a). Likewise, a disclaimer is unnecessary when the entity designation is part of a unitary, registrable whole (e.g., "T-MarkeyInc."). See TMEP §§1213.05–1213.05(h).
Unregistrable components of trade names or company names shall be disclaimed pursuant to the same rules that apply generally to trademarks. See In re Martin’s Famous Pastry Shoppe, Inc., 221 USPQ 364 (TTAB 1984) , aff’d on other grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (affirming requirement for disclaimer of PASTRY SHOPPE in application to register MARTIN’S FAMOUS PASTRY SHOPPE INC. and design for various baked goods).
A mark or portion of a mark is considered "unitary" when it creates a commercial impression separate and apart from any unregistrable component. The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable. See In re Lego Juris A/S, 2022 USPQ2d 443, at *6 (TTAB 2022); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981). The inquiry focuses on "how the average purchaser would encounter the mark under normal marketing of such goods and also . . . what the reaction of the average purchaser would be to this display of the mark." Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)). The Court of Appeals for the Federal Circuit has set forth the elements of a unitary mark:
A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.
Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052. If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required.
The examining attorney must consider a number of factors in determining whether matter is part of a single or unitary mark: whether it is physically connected by lines or other design features; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052.
The examining attorney should exercise discretion in determining whether a mark or portion of a mark is unitary, in which case a disclaimer of a nondistinctive component must not be required. Some considerations that may factor into an assessment of whether wording in a mark or portion of a mark is unitary are discussed in TMEP §§1213.05(a)–(b)(iii). Each consideration may not apply in every case, and a phrase may be found to be unitary or to constitute a slogan even where none apply if, for some other reason, the whole is something more than the sum of its parts. Furthermore, if a mark that includes a registrable unitary phrase or slogan also has other unregistrable components that are separable, the latter must be disclaimed.
A compound word mark is comprised of two or more distinct words (or words and syllables) that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, and PULSAIR).
If a compound word mark consists of an unregistrable component and a registrable component combined into a single word, no disclaimer of the unregistrable component of the compound word will be required. See In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (finding that "[a] disclaimer of a descriptive portion of a composite mark is unnecessary . . . if the elements are so merged together that they cannot be regarded as separable elements . . . for example, . . . by combining two words or terms, one of which would be unregistrable by itself . . .").
If a composite mark consists of a compound word combined with arbitrary matter, and the compound word is unregistrable, a disclaimer of the compound word may be required. The form of the disclaimer of the compound word – that is, whether the disclaimed portion of the mark appears as one compound word or as two or more distinct words – should be consistent with the evidence of descriptiveness. If the compound word itself (with no spaces) is used descriptively, it should be disclaimed in that form. Otherwise, the disclaimed portion should appear as two or more distinct words, separated by spaces. See TMEP §1213.08(c) regarding disclaimer of misspelled words.
See TMEP §807.12(e) regarding drawings of compound word marks.
A telescoped mark is one that comprises two or more words that share letters (e.g., HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, and POLLENERGY). See TMEP §807.12(e) regarding drawings for telescoped marks.
A telescoped word is considered unitary. Therefore, no disclaimer of an individual portion of a telescoped word is required, regardless of whether the mark is shown in a standard character or special form drawing.
However, if a telescoped word is itself unregistrable, a disclaimer of the telescoped word may be required. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for banking services in the absence of a disclaimer of "FIRST TIER," in view of evidence that the term describes a class of banks). See TMEP §1213.08(c) regarding disclaimers of misspelled words, in general.
When a compound word is formed by hyphenating two words or terms, one of which would be unregistrable alone, no disclaimer is necessary. "X" Labs., Inc. v. Odorite Sanitation Serv. of Balt., Inc., 106 USPQ 327, 329 (Comm’r Pats. 1955) (holding requirement for a disclaimer of "TIRE" unnecessary in application to register TIRE-X for a tire cleaner).
Word marks consisting of two terms joined by an asterisk (e.g., RIB*TYPE), a slash (e.g., RIB/TYPE) or a raised period (e.g., RIB°TYPE) are analogous to hyphenated words. Therefore, no disclaimer of portions of marks formed by asterisks, slashes, or raised periods is necessary.
If a hyphenated term comprising part of a mark is unregistrable, then a disclaimer of the hyphenated term may be required. See TMEP §1209.03(d) regarding determinations of whether a composite comprising two descriptive terms is itself descriptive. In this situation, the examining attorney must require a disclaimer of the words in the correct spelling.
Example 1: If the mark includes the term SOFT-TOYS for stuffed animals, the applicant must disclaim the two separate words "SOFT TOYS" apart from the mark as shown.
Example 2: If the mark includes the term OVER-COAT for winter coats, the applicant must disclaim the compound word "OVERCOAT," because this is how the term is commonly spelled.
A phrase is "a group of words that are used together in a fixed expression," and "a word or words that act as a unit in a clause." MacmillanDictionary.com, search of "phrase," http://www.macmillandictionary.com/dictionary/american/phrase (Accessed April 19, 2022). Acting as a single idea or a syntactical unit, however, does not necessarily mean that a phrase is "unitary" in the trademark sense. A phrase qualifies as unitary in the trademark sense only if the whole is something more than the sum of its parts. Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN FORMULA and design for cosmetic products not unitary since the "elements are not so merged together that they cannot be regarded as separate" and the proximity of the words to the design feature "does not endow the whole with a single, integrated, and distinct commercial impression").
Even where it includes an otherwise unregistrable component, a unitary phrase as a whole will have "some degree of ingenuity in its phraseology as used in connection with the goods; or [say] something a little different from what might be expected to be said about the product; or [say] an expected thing in an unexpected way." Ex parte Mooresville Mills, Inc., 102 USPQ 440, 441 (Comm’r Pats. 1954) (holding FROM FIBER TO FABRIC FOR THE STYLE CONSCIOUS MILLIONS for fabrics capable of registration on the Supplemental Register).
Phrases must be analyzed on a case-by-case basis to determine whether their meaning and commercial impression indicate an inseparable whole. As noted above, a unitary phrase derives its meaning when viewed as a whole, with the combination of the components having a distinct commercial impression that is independent of the constituent elements. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052 (noting that the proximity of the words EUROPEAN FORMULA to the design feature "does not endow the whole with a single, integrated, and distinct commercial impression"). In some cases, in addition to the mark itself, the specific arrangement and placement of all the elements of the phrase and the manner of use and presentation on the specimen, on applicant’s website, in promotional materials, and in connection with other goods or services may all demonstrate how the phrase is presented to and perceived by consumers.
Some considerations for determining whether a phrase that comprises a mark or part of a mark is unitary are set forth below.
A slogan is a type of phrase and is defined as "a brief attention-getting phrase used in advertising or promotion" and "a catch phrase used to advertise a product." Merriam-Webster.com, search of "slogan," http://www.merriam-webster.com/dictionary/slogan (Jan. 31, 2012); Webster’s New World College Dictionary (4th ed. 2010). A registrable slogan is one that is used in a trademark sense and functions as a trademark or service mark on the Principal or Supplemental Register, including the Principal Register under §2(f). Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970) (holding that the mark HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE for hair tinting, dyeing, coloring preparations had become distinctive of the goods and was registrable); In re The Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (holding QUALITY THROUGH CRAFTSMANSHIP registrable for radio receivers and transmitters, power supplies, and antennae). Slogans, by their attention-getting nature, are treated as unitary matter and must not be broken up for purposes of requiring a disclaimer.
However, if a mark consists entirely of a slogan that is generic, merely descriptive, merely informational, or that is otherwise not being used as a mark, registration must be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (holding AMERICA’S FRESHEST ICE CREAM for flavored ices, ice cream, etc., incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (holding WHY PAY MORE! for supermarket services to be an unregistrable common commercial phrase); see TMEP 1213.05(b)(iii).
If an unregistrable slogan is a component of a mark with registrable matter, the examining attorney must require that the slogan be disclaimed.
Grammatical structure and punctuation may play a part in the analysis of whether a phrase or slogan would be viewed as unitary. Such considerations serve as guidelines rather than dispositive factors and the weight to be given each depends upon the overall meaning and commercial impression of the mark.
Verbs indicate "the performance or occurrence of an action or the existence of a condition or a state of being." The Chicago Manual of Style ¶ 5.95 (16th ed. 2010). The presence of a verb may indicate that a mark or portion of a mark is a unitary phrase or slogan by linking a subject and an object, or by referring to something that is ongoing, thereby creating continuity of thought or expression. See id. ¶ 5.96.
Example 1: TIP YOUR HAT for "hats"
When linked with the phrase YOUR HAT, the verb TIP renders the mark as a unitary phrase that creates the commercial impression of touching or raising a hat as a greeting or polite gesture. No disclaimer of HAT is required.
Example 2: TRANSFORMING STATE GOVERNMENT for "providing information in the field of government affairs"
The verb TRANSFORMING indicates an ongoing activity being performed on STATE GOVERNMENT, thereby unifying the terms so that they function as a unit. No disclaimer of STATE GOVERNMENT is required.
Some additional examples of phrases in which the verb renders the phrase unitary are:
FILING TAXES SO YOU DON'T HAVE TO for "tax preparation"
BOATS ARE FUN for "boats"
TAKE THIS MEDICINE for "cough syrup"
See TMEP §1213.05(b)(ii)(B) for examples in which the combination of a verb and a preposition link the wording to create a unitary phrase.
Prepositions are words or phrases that link a grammatical object–such as a noun, pronoun, verb, adjective, or phrase–to another word to indicate the relationship between them. See The Chicago Manual of Style ¶ 5.169 (16th ed. 2010). For instance, the relationship could be one of space, location, time, cause, means, or possession. See id. ¶ 5.174. Examples of prepositions include above, at, before, between, by, for, from, in, into, of, on, since, through, to, toward, until, and with. See id. ¶ 5.170. A prepositional phrase is the combination of the "preposition, its object, and any words that modify the object," such as "over the hill," "in the sports car," or "near her." See id. ¶ 5.173.
Wording in a mark that comprises a prepositional phrase is generally connected or unified by the preposition(s) in such a way that the elements would not be regarded as separable. In addition, marks comprised of prepositional phrases often have the commercial impression of a catch phrase or slogan. In some instances, however, marks contain distinctive matter followed by unitary prepositional phrases that are informational or descriptive, and these prepositional phrases are separable from the rest of the mark and must be disclaimed. Common examples include "of" followed by a geographic place name (e.g., "of Atlanta") and "for" followed by a consumer designation (e.g., "for children").
Example 1: MANGOES FOR THE EARTH for "fresh mangoes"
The preposition FOR joins THE EARTH with MANGOES, indicating a relationship between the wording. MANGOES is not separable because the prepositional phrase modifying it brings all the wording in the mark together to convey something more than the individual components. No disclaimer of MANGOES is required.
Example 2: A DAY OF HOPE FOR HEART DISEASE for "educational services, namely, conducting workshops in the field of heart disease"
The prepositions OF and FOR create two prepositional phrases joined as a unit that could be viewed as a catch phrase. No disclaimer of HEART DISEASE is required.
Example 3: ESTEE LAUDER FOR MEN for "cologne"
The descriptive prepositional phrase FOR MEN appears separable from the rest of the mark and does not create a distinct meaning independent of the meaning of the separate elements. Disclaimer of FOR MEN is required.
Some additional examples of phrases in which the preposition renders the phrase unitary are:
TALES OF THE COCKTAIL for "educational services, namely, conducting seminars in the field of mixology"
MENTORS FOR COMPLETE TEACHING for "conducting remedial tutoring programs for children in the areas mathematics and science"
CHECK UP FROM THE NECK UP for "medical services"
LANGUAGE OF LOLLIPOPS for "candy"
DEPARTMENT OF THE NAVY for "printed newsletters in the field of military science"
A DIVISION OF XYZ INDUSTRIES for "construction of buildings"
In some cases, the combination of a verb and a preposition link the wording to create a unitary phrase. For example:
GET MORE FROM ENERGY for "providing temporary use of online non-downloadable software for computing energy savings"
CHANGING THE WORLD OF SUSHI for "restaurant services"
WOMEN WHO RUN FROM COMPUTERS for "computer education training using multisensoral methods, group process and drama to motivate those with computer anxiety or fear"
The use of punctuation, such as a question mark, exclamation point, colon, dash, or period, as well as the meaning of the punctuation itself, may be a factor weighing either in favor of or against a mark or a portion of a mark being a unitary phrase or slogan. Note, however, that the presence of punctuation in a mark comprising a slogan or phrase should not be confused with the significance of punctuation in a mark containing compound words that are formed using punctuation. See TMEP §1213.05(a)(ii). Punctuation may either unite or separate all or some of the words in the mark. Where punctuation unites all the words, the mark or phrase as a whole is likely unitary. Where punctuation separates some of the words, however, the result likely indicates a mark or phrase that is not unitary, requiring disclaimer or refusal of the unregistrable matter. Therefore, the punctuation in the mark must be considered in connection with an assessment of the specific arrangement of the words and the overall meaning and commercial impression of the slogan or phrase.
Example 1: CREATIVE NAILS? for "nail polish"
A question mark can be "used to indicate a direct question" or "express surprise, disbelief, or uncertainty." The Chicago Manual of Style ¶ 6.66 (16th ed. 2010). Here, the question mark at the end of the phrase joins the terms so that they function as a unit, thereby changing the commercial impression. No disclaimer of NAILS is required.
Example 2: GO! PUZZLE for "downloadable computer game software"
An exclamation point can be used to indicate "an outcry or an emphatic or ironic comment." Id. ¶ 6.71. It is usually placed at the end of a thought and indicates the conclusion of that thought. Here, the exclamation point is in the middle of the mark and physically separates GO and PUZZLE. The exclamation point also conceptually separates GO from PUZZLE because it gives GO a commanding and urgent connotation not applied to PUZZLE. Since PUZZLE is outside of the exclamatory statement and is descriptive for the goods, it is not united with GO. Disclaimer of PUZZLE is required.
Example 3: COMFY. COZY. COTTON for "bed sheets and blankets"
In this example, the period after each term physically and conceptually separates the terms such that each stands alone. Therefore, the wording does not comprise a unitary mark and a disclaimer of COTTON is required.
Example 4: NAA – NATIONAL ASSOCIATION OF ACCOUNTANTS for "association services, namely, promoting the interests of accountants"
Here, the punctuation physically and conceptually separates the wording in the mark. Moreover, the phrase NATIONAL ASSOCIATION OF ACCOUNTANTS is descriptive and must be disclaimed.
Example 5: BONDS – THE FUTURE OF INVESTING for "financial planning"
The punctuation physically and conceptually separates the wording in the mark and a disclaimer of BONDS is required. Note, however, that THE FUTURE OF INVESTING is a unitary phrase, avoiding a disclaimer of INVESTING.
In some cases, the use of punctuation in combination with a verb and/or preposition may combine to create a unitary phrase or a mark with a distinct meaning independent of the meaning of the separate elements, as shown below:
HAVE YOU HAD YOUR MEDS TODAY? for "prescription pills for diabetics"
PAPER FOR YOUR OFFICE. TO YOUR OFFICE. for "retail store services in the field of office products"
WHERE SNACKS LOVE TO DIP! for "dips"
GO FOR GOLD! for "gold jewelry"
Generally, the use of a possessive form of a word in a mark does not, by itself, merge the wording so as to create the commercial impression of a unitary phrase or slogan. However, if the mark contains the possessive form of a word as well as one of the considerations discussed above, this combination of the elements may result in a slogan or unitary phrase.
Example 1: BILL’S CARPETS for "retail carpet stores"
The possessive form of BILL’S alone is not sufficient to unite BILL’S with CARPETS such that the whole is more than the sum of its parts. Disclaimer of CARPETS is required.
Example 2: BILL’S IS CARPETS for "retail carpet stores"
The possessive BILL’S does not, by itself, unite BILL’S with CARPETS. However, the presence of the verb IS unites all the words to convey a complete thought that functions as a unit and expresses a fanciful state of being. No disclaimer of CARPETS is required.
Some other examples of wording in which the possessive does not create a unitary phrase and disclaimer of the descriptive wording is required are:
THE CHILDREN’S PLACE for "shirts"; "backpacks"; "retail clothing stores" (disclaimer of CHILDREN’s required)
BARB’S BREAD BAKERY, INC. for "bakery services, namely, the manufacture of bakery products to order and/or specification of others" (disclaimer of BREAD BAKERY, INC. required)
HUBER'S PREMIUM WORKWEAR for "clothing, namely, shirts and pants" (disclaimer of PREMIUM WORKWEAR required)
Even if none of the considerations discussed above apply, there may be something about the components of the mark that joins them together and transforms them into a unitary phrase or slogan. If other considerations, such as word pattern, double entendre, and incongruity (see TMEP §§1213.05(c)-1213.05(e)), or the context, rhetorical structure, or some other aspect of the mark creates a distinct meaning or commercial impression that is more than its constituent parts, the phrase should be deemed unitary for purposes of a disclaimer. For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning.
Example 1: BLACK MAGIC for "accessories for skateboards and snowboards, namely grip tape"
The wording "Black Magic" has a distinct meaning of its own as a whole. The word BLACK is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.
Example 2: NOT YOUR ORDINARY DINER for "restaurant services"
The combination formed by the familiar phrase NOT YOUR ORDINARY followed by a descriptive or generic term creates a unitary phrase. No disclaimer of DINER is required.
Example 3: CORPORATE FUEL for "business management and advisory services"
Here, the descriptive term CORPORATE and the arbitrary word FUEL combine to create a unitary phrase that is a play on actual types of fuel, like jet fuel or diesel fuel. No disclaimer of CORPORATE is required.
Note, however, that in the following examples, nothing about the components of the marks joins them together and transforms them into unitary phrases.
Example 4: SWEETER PEARS REGENCY ORCHARD for "fresh pears"
The mark does not contain a verb, preposition, or punctuation. Except for REGENCY, all the terms are descriptive and inform about the goods, their nature, and the type of place where they are grown. That the arbitrary term REGENCY is in the middle does not connect all the words to create a unitary phrase. Therefore, SWEETER PEARS and ORCHARD must be disclaimed.
Example 5: AAMCO COMPLETE CAR CARE EXPERTS for "motor vehicle maintenance and repair services"
The arbitrary term AAMCO is not connected to the rest of the terms, since there is no verb, preposition, or punctuation. The wording COMPLETE CAR CARE EXPERTS, which is descriptive and a separable element from AAMCO, must be disclaimed.
Although the determination that a mark or portion of a mark is unitary may provide an exception to the disclaimer requirement, when an entire unitary phrase or slogan is generic, descriptive, or merely informational, it remains unregistrable. To illustrate, "common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry" are unregistrable despite the fact that they may be unitary phrases or slogans. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale); In re Remington Prods. Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM for flavored ices); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD for construction material); see also TMEP §§1209.03(s) and 1202.04. Therefore, unless a unitary phrase or slogan otherwise meets all requirements for registrability, it must be disclaimed or refused registration, as appropriate.
A double entendre is a word or expression capable of more than one interpretation. For trademark purposes, a double entendre is an expression that has a double connotation or significance as applied to the goods or services. The mark that comprises the double entendre will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services. In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008) (citing In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968); In re Simmons Co., 189 USPQ 352 (TTAB 1976); In re Del. Punch Co., 186 USPQ 63 (TTAB 1975); In re Nat’l Tea Co., 144 USPQ 286 (TTAB 1965)).
A true double entendre is unitary by definition. An expression that is a double entendre should not be broken up for purposes of requiring a disclaimer. In In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), the Board found inappropriate a requirement for a disclaimer of "LIGHT" apart from the mark "LIGHT N’ LIVELY" for reduced calorie mayonnaise, stating as follows:
The mark "LIGHT N’ LIVELY" as a whole has a suggestive significance which is distinctly different from the merely descriptive significance of the term "LIGHT" per se. That is, the merely descriptive significance of the term "LIGHT" is lost in the mark as a whole. Moreover, the expression as a whole has an alliterative lilting cadence which encourages persons encountering it to perceive it as a whole.
See also In re Symbra’ette, Inc., 189 USPQ 448 (TTAB 1975) (holding SHEER ELEGANCE for panty hose to be a registrable unitary expression; thus, no disclaimer of "SHEER" considered necessary).
The multiple interpretations that make an expression a double entendre must be associations that the public would make fairly readily, and must be readily apparent from the mark itself. See, e.g., In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *7-8 (TTAB 2019) (finding SCOOP for ice cream, which merely described the serving size of the goods, did not present a double entendre because the applicant made no showing that the interpretation of SCOOP in this context was that of a ‘news scoop’); In re RiseSmart Inc., 104 USPQ2d 1931, 1934 (TTAB 2012) (finding that TALENT ASSURANCE does not present a double entendre such that "the merely descriptive significance of the term [TALENT] is lost in the mark as a whole"); In re The Place, Inc., 76 USPQ2d 1467, 1470 (TTAB 2005) (holding THE GREATEST BAR laudatory and merely descriptive of restaurant and bar services; the Board stating that "[i]f the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of the applicant’s trade dress, advertising materials or other matter separate from the mark itself, then the mark is not a double entendre"); In re Wells Fargo & Co., 231 USPQ 95, 99 (TTAB 1986) (holding EXPRESSERVICE merely descriptive for banking services, despite applicant’s argument that the term also connoted the Pony Express, the Board finding that, in the relevant context, the public would not make that association).
If all meanings of a double entendre are merely descriptive in relation to the goods, then the mark comprising the double entendre must be refused registration as merely descriptive.
In certain cases, marks were considered to be double entendres and, therefore, registrable unitary marks. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (SUGAR & SPICE for bakery products); In re Tea & Sympathy, Inc., 88 USPQ2d 1062 (THE FARMACY for retail store services featuring natural herbs and organic products and related health and information services relating to dietary supplements and nutrition); In re Simmons Co., 189 USPQ 352 (THE HARD LINE for mattresses and bed springs); In re Del. Punch Co., 186 USPQ 63 (THE SOFT PUNCH for noncarbonated soft drink); In re Nat'l Tea Co., 144 USPQ 286 (NO BONES ABOUT IT for fresh pre-cooked ham).
If two or more terms are combined in a mark to create an incongruity (e.g., URBAN SAFARI, MR. MICROWAVE, and DR. GRAMMAR), the mark is unitary and no disclaimer of nondistinctive individual elements is necessary. See TMEP §1209.01(a) regarding incongruity.
Alliterative or repeated wording does not in itself make a mark unitary. In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007) (finding the rhyming quality of the words ZOGGS TOGGS "does not infuse TOGGS with any separate and distinct meaning apart from its generic meaning"); In re Lean Line, Inc., 229 USPQ 781, 782 (TTAB 1986) (holding LEAN LINE not unitary; "there is nothing in the record to suggest that the mere fact that both words which form the mark begin with the letter ‘L’ would cause purchasers to miss the merely descriptive significance of the term ‘LEAN’ or consider the entire mark to be a unitary expression.")
In rare cases, a rhyming pattern, alliteration, or some other use of sound that creates a distinctive impression may contribute to a finding that the mark is regarded as unitary and individual elements should not be disclaimed. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) (finding LIGHT N’ LIVELY to be a unitary term not subject to disclaimer, because the mark as a whole "has a suggestive significance which is distinctly different from the merely descriptive significance of the term 'LIGHT' per se" and that "the merely descriptive significance of the term 'LIGHT' is lost in the mark as a whole."). Other evidence, such as registrations of the mark for related goods and consumer recognition of the mark as a unitary expression, may also contribute to a finding that the mark is unitary. Id.
The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary. See, e.g., In re Lego Juris A/S, 2022 USPQ2d 443, *7-9 (TTAB 2022) (holding the mark, MONKIE KID and monkey head design with stylized non-Latin characters, unitary where "the words MONKIE and KID are physically connected to the design of a monkey's head, which touches and slightly overlaps with the final letter of MONKIE and the first letter of KID;" and the vertical depiction of a similar MONKIE KID mark unitary for the same reasons); In re Texsun Tire & Battery Stores, Inc., 229 USPQ 227, 229 (TTAB 1986) ("[T]he portion of the outline of the map of Texas encircled as it is with the representation of a tire and surrounded by a rectangular border results in a unitary composite mark which is unique and fanciful."); cf. In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006) (holding trade dress configuration of product design consisting of a label with the words "FLASH DARE!" in a V-shaped background, and cut-out areas located on each side of the label, with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device not to be unitary where applicant owned separate registrations for some of the elements and in view of the separate locations of the words and design elements).
Generally, when a design element replaces one or more letters (or a portion of a letter or letters) in a word that is merely descriptive, generic, or geographically descriptive, this combination of word and design element does not create a "unitary mark" if the word remains recognizable. Accordingly, the examining attorney must require a disclaimer of the merely descriptive, generic, or geographically descriptive word in such cases. See In re Clutter Control, Inc., 231 USPQ 588, 590 (TTAB 1986) .
If the wording to be disclaimed is otherwise registrable (i.e., not generic), applicant may submit a claim of acquired distinctiveness as to that portion of the mark under Trademark Act §2(f). The examining attorney must always separately determine whether an applicant has adequately shown acquired distinctiveness. See In re Venturi, Inc., 197 USPQ 714, 717 (TTAB 1977) .
The examining attorney must also assess whether the proposed mark might be unitary for other reasons (such as a compound or telescoped mark).
Marks with a distinctive design that replaces a letter or part of a letter are registrable on the Principal Register with a disclaimer of the merely descriptive, generic, or primarily geographically descriptive wording. For example:
Principal Register – Disclaimer of "WOOL"
Principal Register – Disclaimer of "INC." and "ANIMAL FOOD"
Principal Register – Disclaimer of "CLOTHING CO."
Principal Register – Disclaimer of "PARIS"
Principal Register – Disclaimer of "PONY"
Principal Register – Disclaimer of "FISH"
Principal Register – Disclaimer of "KIDS"
Principal Register – Disclaimer of "NUTRITION"
Principal Register – Disclaimer of "TOWELS"
Principal Register – Disclaimer of "DOGGIE"
If the design that replaces a letter within descriptive or primarily geographically descriptive wording is itself merely descriptive or primarily geographically descriptive, or is otherwise nondistinctive, the examining attorney must require the applicant to amend to the Supplemental Register or seek registration on the Principal Register under §2(f) and to disclaim any generic wording. For example:
Disclaim "BANKERS ASSOCIATION" on Principal Register under §2(f) or on Supplemental Register
Disclaim "BUILDERS ASSOCIATION" on Principal Register under §2(f) or on Supplemental Register
Disclaim "CHECK CASHERS" on Principal Register under §2(f) or on Supplemental Register
If the mark is otherwise merely descriptive or primarily geographically descriptive, and the design replacing a letter is an accurate pictorial representation of generic, merely descriptive, or geographically descriptive matter, the examining attorney must require the applicant to amend to the Supplemental Register or seek registration on the Principal Register under Trademark Act §2(f). The applicant must disclaim any generic wording or any accurate pictorial representation of generic matter. For example:
Disclaim "SOCCER BALLS" and the pictorial representation of the soccer ball on the Principal Register under §2(f) or on the Supplemental Register
If literal and design elements in a mark are so merged together that they cannot be divided or regarded as separable elements, these elements may be considered unitary. For example, where the design element replacing a letter is merely one part of a larger design, the mark may be unitary, and no disclaimer of the descriptive or generic wording is required:
In the following cases, marks were considered unitary: B. Kuppenheimer & Co., v. Kayser-Roth Corp., 326 F.2d 820, 822, 140 USPQ 262, 263 (C.C.P.A. 1964) (holding that KUPPENHEIMER and SUP-PANTS were combined so that they shared the double "P," making "an indivisible symbol rather than two divisible words"); In re Lego Juris A/S, 2022 USPQ2d 443, *7-9 (TTAB 2022) (holding MONKIE KID and monkey head design with stylized non-Latin characters unitary); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) (finding that purchasers would regard LIGHT N’LIVELY as a unitary mark); In re Hampshire-Designers, Inc., 199 USPQ 383, 384 (TTAB 1978) (holding DESIGNERS PLUS+ for sweaters unitary); In re J.R. Carlson Labs., Inc., 183 USPQ 509, 511 (TTAB 1974) (holding E GEM unitary for bath oil containing vitamin E ).
In the following cases, marks were found not to be unitary: In re Slokevage, 441 F.3d 957, 963 78 USPQ2d 1395, 1400 (Fed. Cir. 2006) (holding not unitary trade dress mark for clothing consisting of a label with the words "FLASH DARE!" in a V-shaped background and cut-out areas located on each side of the label); Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052 (holding EUROPEAN FORMULA above a circular design on a dark square or background not unitary); In re Ginc UK Ltd., 90 USPQ2d 1472, 1476 (TTAB 2007) (holding ZOGGS TOGGS for clothing not unitary and affirming requirement for disclaimer of "TOGGS"); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006) (holding GALA ROUGE for wine not unitary and affirming requirement for disclaimer of "ROUGE"); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (holding LEAN LINE for low calorie foods not unitary; requirement for disclaimer of "LEAN" held proper); In re IBP, Inc., 228 USPQ 303 (TTAB 1985) (holding IBP SELECT TRIM for pork not unitary; refusal of registration in the absence of a disclaimer of "SELECT TRIM" affirmed); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (holding UNIROYAL STEEL/GLAS for vehicle tires not unitary; requirement for disclaimer of "STEEL/GLAS" deemed appropriate); In re EBS Data Processing, 212 USPQ at 966 (TTAB 1981) (holding PHACTS POCKET PROFILE, for personal medication history summary and record forms, not unitary; refusal to register in the absence of a disclaimer of "POCKET PROFILE" affirmed. "A disclaimer of a descriptive portion of a composite mark is unnecessary only where the form or degree of integration of that element in the composite makes it obvious that no claim other than of the composite would be involved. That is, if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary."); In re Nat’l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977) (holding PRESTO BURGER for electrical cooking utensils not unitary; requirement for disclaimer of "BURGER" affirmed).
An entire mark may not be disclaimed. If a mark is not registrable as a whole, a disclaimer will not make it registrable. There must be something in the combination of elements in the mark, or something of sufficient substance or distinctiveness over and above the matter being disclaimed, that would make the composite registrable. See In re Sadoru Group, Ltd., 105 USPQ2d 1484 (TTAB 2012) (finding the stylization of SADORU does not create a separate and inherently distinctive commercial impression apart from the word itself); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re Anchor Hocking Corp., 223 USPQ 85, 86 (TTAB 1984) (citing In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980)); Ex parte Ste. Pierre Smirnoff Fls, Inc., 102 USPQ 415, 416 (Comm’r Pats. 1954). This includes marks that are comprised entirely of generic wording, and either the entire mark or some of the terms are the phonetic equivalent of the generic wording. Such marks cannot be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).
In Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991), the Court of Appeals for the Federal Circuit stated as follows:
[U]nder traditional disclaimer practice, an applicant could not disclaim all elements of a composite mark. Section 1056(a) codified this policy. A mark which must be entirely disclaimed has no ‘unregistrable component,’ but is instead entirely nonregistrable. In other words, a mark which must be entirely disclaimed has no ‘otherwise registrable’ parts. Therefore, such marks do not qualify as composite marks for which the Commissioner may require a disclaimer.
See also In re MCI Commc’n Corp., 21 USPQ2d 1534, 1538 (Comm'r Pat. 1991).
When it is not clear that matter forms part of a mark, the examining attorney must consider whether it is appropriate for the applicant to amend the drawing of the mark to remove the matter, rather than to disclaim it. See TMEP §807.14(a) regarding deletion of matter from the mark on a drawing. An applicant may not amend the drawing if the amendment would constitute a material alteration of the mark. 37 C.F.R. §2.72; TMEP §§807.14–807.14(f).
There are circumstances under which the applicant may omit or remove matter from the mark shown in the drawing, if the overall commercial impression is not altered. See Institut Nat’l Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1582, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950). However, matter may not be omitted from the drawing if the omission would result in an incomplete representation of the mark, sometimes referred to as "mutilation." See TMEP §807.12(d). In other words, the matter presented for registration must convey a single distinct commercial impression. If a mark is not unitary in this sense, it cannot be registered. See Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).
Since November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted. Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date. Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983. The disclaimed matter is taken from the disclaimer of record and inserted into the standardized disclaimer format for printing and Trademark database purposes. The standardized disclaimer text is as follows:
No claim is made to the exclusive right to use "____________" apart from the mark as shown.
See 1022 OG 44 (Sept. 28, 1982). See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm’r Pats. 1983) ("[T]he use of the standardized form is solely for the purpose of printing and data base purposes, not for the limitation of registrant’s rights.").
For the record only, examining attorneys will accept disclaimers with additional statements pertaining to reservation of common-law rights, although §6 of the Trademark Act of 1946 states that no disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter. Disclaimers with these additional statements can be entered by examiner’s amendment. The examining attorney must inform the applicant or attorney who authorizes the amendment that the disclaimer will be printed in the standardized format.
Where non-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:
No claim is made to the exclusive right to use "________" and "________" apart from the mark as shown.
While the "and" connector is preferred, the USPTO will also accept a statement that "no claim is made to the exclusive right to use "________" or "________" apart from the mark as shown."
See TMEP §1213.08(b) regarding the disclaimer of unregistrable matter in its entirety.
Wording that claims matter, rather than disclaims it, is not acceptable. A disclaimer should be no more than a statement that identifies matter to which the applicant may not have exclusive rights apart from what is shown on the drawing.
Therefore, statements that the applicant "claims" certain matter in the association shown are not acceptable. The examining attorney must require correction of this wording and of variations that amount to the same thing. Likewise, a statement that the mark is "not claimed except in the association shown," or similar wording, is not acceptable, and the examining attorney must require correction. See Textron Inc. v. Pilling Chain Co., 175 USPQ 621, 621-22 (TTAB 1972), concerning an application which included the statement, "The mark is not to be claimed except in the setting presented." The Board found this wording unacceptable, noting, "The alleged disclaimer filed by applicant is in such vague terms that it actually disclaims nothing."
A statement that purports to limit a mark by excluding color(s) or other features that do not appear in the mark is not appropriate for inclusion in a disclaimer. The issue most often arises where there are possible infringement issues involving a particular color, the applicant’s mark does not claim any color, but the applicant attempts to "disclaim" the color from the application with a statement such as: "No claim is made to the exclusive right to use the color purple within or as part of the (design element) apart from the mark as shown."
Although applicants may include such restrictive statements in the application record, they are not appropriate for the registration certificate. Accordingly, if an applicant inserts any such limiting statement in a disclaimer, the examining attorney must ensure that it is deleted from the Trademark database so that it will not be printed on the registration certificate.
Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms that form a grammatically or otherwise unitary expression (e.g., "SHOE FACTORY, INC."), the examining attorney must require that they be disclaimed in their entirety. See, e.g., In re Med. Disposables Co., 25 USPQ2d 1801 (TTAB 1992) (finding MEDICAL DISPOSABLES to be a unitary expression that must be disclaimed as a composite); Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Soc'y, 224 USPQ 798, 805 n.3 (TTAB 1984) (finding "CERTIFIED HEARING AID AUDIOLOGIST" to be "a unitary expression that should be disclaimed in its entirety"); In re Surelock Mfg. Co., 125 USPQ 23, 24 (TTAB 1960) (holding proposed disclaimer of "THE" and "RED" and "CUP" unacceptable to comply with requirement for disclaimer of "THE RED CUP," the Board concluding, "A disclaimer of the individual components of the term ‘THE RED CUP,’ under the circumstances, is meaningless and improper"); In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats. 1987) (denying petitioner’s request to substitute separate disclaimers of "GLASS" and "TECHNOLOGY" for the disclaimer of "GLASS TECHNOLOGY" in its registration of GT GLASS TECHNOLOGY in stylized form, the Commissioner finding "GLASS TECHNOLOGY" to be a unitary expression and noting, "Disclaimers of individual components of complete descriptive phrases are improper.").
However, separate disclaimers of adjacent components of a mark may be accepted where they do not form a grammatically or otherwise unitary expression, and each component retains its separate descriptive significance. In re Grass GmbH, 79 USPQ2d 1600 (TTAB 2006) (reversing requirement for unitary disclaimer of "SNAP ON 3000," and accepting separate disclaimers of "SNAP ON" and "3000.")
Marks often comprise words that may be characterized as "misspelled." For example, marks may comprise terms that are "telescoped" (see TMEP §1213.05(a)(i)) or terms that are phonetic equivalents of particular words but spelled in a manner that varies from the ordinary spelling of such words.
If a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the examining attorney must require disclaimer of the word or words in the correct spelling. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re Newport Fastener Co. , 5 USPQ2d 1064, 1067 n.4 (TTAB 1987) . However, the entry of a disclaimer does not render registrable a mark that is otherwise unregistrable. For example, if a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).
If the examining attorney has not required any disclaimer of misspelled wording because a disclaimer is not necessary under USPTO policy, the applicant may provide a disclaimer of the wording as spelled in the mark or in its correct spelling voluntarily. In such a case, the examining attorney must offer the applicant the opportunity to withdraw the disclaimer. If it is necessary to communicate with the applicant about another matter, the examining attorney must state in the Office action that the disclaimer appears to be unnecessary, and inquire as to whether the applicant wants to withdraw the disclaimer. If it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or email. If the applicant wants to delete the disclaimer, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or email message (applicant should be given at least three business days), the examining attorney must enter an appropriate Note to the File in the record. Again, the disclaimer does not render an otherwise unregistrable mark registrable. The examining attorney must consider the entire mark, including the disclaimed matter, to determine whether the entire mark is registrable.
Non-English wording that comprises an unregistrable component of a mark is subject to disclaimer. See Bausch & Lomb Optical Co. v. Overseas Finance & Trading Co. , 112 USPQ 6, 8 (Comm’r Pats. 1956) (noting that "Kogaku," the transliteration of the Japanese word for "optical," was properly disclaimed).
If translated non-English wording must be disclaimed, the actual non-English wording must be disclaimed, not the English translation. The applicant must disclaim the wording that actually appears in the mark, not the translated version. For non-Latin characters, the following format is suggested:
No claim is made to the exclusive right to use the non-Latin characters that transliterate to "[specify Latin character transliteration]" apart from the mark as shown.
See TMEP §§809–809.03 regarding translation and transliteration of non-English wording in marks.
Normally, a mark that includes a mark registered by another person must be refused registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), based on likelihood of confusion. A refusal of registration under §2(d) may not be avoided by disclaiming the mark of another. Cf. In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662 (C.C.P.A. 1979) (permitting disclaimer of informational phrase indicating that applicant’s employees are represented by certain labor organizations). See TMEP §1213.10 regarding disclaimer in relation to likelihood of confusion.
A disclaimer does not remove the disclaimed matter from the mark. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. See In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965); In re MCI Commc'ns Corp., 21 USPQ2d 1534, 1538-39 (Comm’r Pats. 1991).
Typically, disclaimed matter will not be regarded as the dominant, or most significant, feature of a mark. However, since the Trademark Act permits an applicant to voluntarily disclaim registrable matter (see TMEP §1213.01(c)), disclaimed matter may be dominant or significant in some cases. As noted in MCI Commc'ns Corp., 21 USPQ2d at 1539, "Examining Attorneys will continue to consider the question of likelihood of confusion, under Section 2(d) of the statute, in relation to the marks as a whole, including any voluntarily disclaimed matter."
In Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538, 545 (1920), the United States Supreme Court stated, regarding registration of a mark with a disclaimer, that "the registrant would be precluded by his disclaimer from setting up in the future any exclusive right to the disclaimed part of it." Subsequently, that principle was applied literally; registrants were prohibited from asserting that disclaimed matter had acquired secondary meaning. See Shaler Co. v. Rite-Way Prods., Inc., 107 F.2d 82, 84, 43 USPQ 425, 427 (6th Cir. 1939).
The situation was changed by the Trademark Act of 1946, which provided that "disclaimer shall not prejudice or affect the applicant’s or owner’s rights then existing or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant’s or owner’s rights of registration on another application of later date if the disclaimed matter has become distinctive of the applicant’s or owner’s goods or services." 15 U.S.C. §1056 (1946), amended by 15 U.S.C. §1056(b) (1962). In 1962, the statutory provision was amended to read, "No disclaimer . . . shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services." 15 U.S.C. §1056(b).
It is now clear that, aside from generic matter, disclaimed matter is not forever barred from registration, and it can subsequently be considered for registration on either the Principal Register or the Supplemental Register. When an application is filed seeking registration of matter previously disclaimed, it must be examined in the same manner as other applications. See Quaker Oil Corp. v. Quaker State Oil Ref. Corp., 161 USPQ 547, 549 (TTAB 1969) , aff’d,453 F.2d 1296, 172 USPQ 361 (C.C.P.A. 1972); Victor Tool & Mach. Corp. v. Sun Control Awnings, Inc., 299 F. Supp. 868, 875-76, 162 USPQ 389, 394 (E.D. Mich. 1968), aff’d, 411 F.2d 792, 162 USPQ 387 (6th. Cir. 1969).
Whether or not previously disclaimed matter has become eligible for registration depends on the circumstances and the evidence adduced in the examination process. See Roux Distrib. Co. v. Duart Mfg. Co., 114 USPQ 511, 512 (Comm’r Pats. 1957); Helena Rubinstein, Inc. v. Ladd, 219 F. Supp. 259, 260, 138 USPQ 106, 107 (D.D.C. 1963) , aff’d, 141 USPQ 623 (D.C. Cir. 1964).
