Section 44 and §66(a) Applications and Distinctiveness

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).