DuetsBlog Collaborations in Creativity & the Law

The Hidden Section 2(f) Claim

Posted in Articles, Guest Bloggers, Mixed Bag of Nuts, Patents, Squirrelly Thoughts, Trademarks, USPTO

-Wes Anderson, Attorney

Hello (again) DuetsBlog! Readers may have noted my recent absence from the blog. I recently embarked on a new stage of my career as in-house corporate counsel, and Steve gave me the opportunity to contribute as a guest blogger.

Even in my in-house role, I remain a trademark law hobbyist. One of the great hidden gems of the Trademark Office’s online database are “file wrappers” – the aged paper folders that served as the formal records for trademark registrations until the early 2000s, when the PTO went fully digital. As a means of preserving the old paper records, the Trademark Office provides public access to full-color scans of these folders.

For example, I’m willing to wager that nearly every reader of this blog owns a pair of GOLD TOE socks. And sure enough, Gildan USA Inc. owns a trademark registration dating back to 1964, No. 770,389 for the GOLD TOE trademark.

One interesting thing to note – as the classic GOLD TOE socks have gold weaving on the toe section, one would expect a modern-day application to require a Section 2(f) claim of acquired distinctiveness. And sure enough, TSDR states the registration is subject to a Section 2(f) claim, but that limitation is nowhere to be found on the registration certificate itself. The renewal filings of record also fail to make any reference to a Section 2(f) claim. So where did it come from?

Here, the file jacket has the answer – and seems to suggest just how precarious PTO record-keeping once was. The first page contains a litany of stamps recording various filings dating back from 1963 all the way to 2004 – still, no Section 2(f) claim. But on page 2, at the very bottom, some Trademark Office employee appears to have made the notation “2(f),” in pencil:

When exactly was this claim made? Did the registration owner make a declaration as to sufficient past use? That’s unclear – all we have is a simple notation.

So, if you have some free time this weekend, I can think of no better way to spend it than delving into the trove of file wrappers preserved on the PTO website. If you find an interesting one, let us know!