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[caguy]

Simple scenario, I registered a TM under acquired distinctiveness 2(f) for a single class.

I now want to register the same mark again in the same class for a broader class of goods.  (I realize this may not be necessary, but that isn't my issue here)

On the new application can I seek registration as inherently distinctive and fall back to 2(f) if necessary? 

Or am I barred or precluded from arguing that the mark is inherently distinctive because of my prior registration?

Thank for the help.

[JSonnabend]

Factually, how would you argue that the mark was not inherently distinctive before but now is?

- Jeff

[caguy]

I realize that is going to be a problem.

My response is that the client always believed that the mark was inherently distinctive.  The examiner suggested the 2(f) amendment in the first application and the client took it in order to save money.  There was never really any argument regarding distinctiveness in the first application.  Now that the client is moderately successful it would like to argue for inherent distinctiveness.

I am aware of TMEP 1212.02(b), but the wording suggests it is a procedural limitation.  Which further suggests that it would not be a bar to future applications.

I realize it would be a huge uphill battle, I would anticipate that the TM Office would immediately rely on the prior finding of 2(f).  I am just wondering if some case that I haven't found precludes me from even making the argument?

[Marke]

Not only may you now argue the mark is inherently distinctive, but the client’s prior registration under 2(f) is either irrelevant or only marginally probative.  For example, in finding the term BRISTOL not geographically descriptive of an applicant’s goods despite the fact that in the past the applicant had either disclaimed the term or availed itself of Section 2(f), the Board stated that “Applicant’s prior registrations which include disclaimers or claims of acquired distinctiveness are of little moment.”  In re John Harvey & Sons Ltd., 32 U.S.P.Q.2d 1451, 1455 (T.T.A.B. 1994).  See also In re Hester Indus., Inc., 230 U.S.P.Q. 797, 798 (T.T.A.B. 1986) (reversing requirement for a disclaimer of THIGHSTIX and finding the term suggestive despite the fact that the applicant had previously registered it on the Supplemental Register; Board stating that “we are not bound by the applicant’s conclusions on this question any more than we are by the Examining Attorney’s”).

[caguy]

@Marke

Thank you, both of those citations look very promising.