ACQUIRED DISTINCTIVENESS (UNDER SECTION 2(F))
If a trademark is merely descriptive but the applicant has used the mark for a long time (generally more than 5 years) and believes that their use of the mark has given the mark distinctiveness, the applicant may apply to the USPTO Principal Register under Section 2(f). See TMEP 1212 for more information on acquired distinctiveness under 2(f).
FACTORS FOR DECIDING ACQUIRED DISTINCTIVENESS
In determining whether a proposed mark has acquired distinctiveness, the following factors are generally considered by the USPTO:
(1) length and exclusivity of use of the mark in the United States by applicant;
(2) the type, expense and amount of advertising of the mark in the United States; and
(3) applicant’s efforts in the United States to associate the mark with the source of the goods and/or services, such as unsolicited media coverage and consumer studies.
All of these factors do not have to be considered, and no single factor is determinative.
In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).
EVIDENCE OF ACQUIRED DISTINCTIVENESS
Evidence of acquired distinctiveness may include:
See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.
NEGATING ACQUIRED DISTINCTIVENESS
In establishing acquired distinctiveness, applicant may not rely on use other than use in commerce that may be regulated by the United States Congress. 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 (TTAB 1999); TMEP §§1010, 1212.08.
FIVE YEARS OF USE MAY OR MAY NOT BE ENOUGH
Five years of use may or may not be sufficient to show acquired distinctiveness. If an applied-
EXAMPLES OF WEAK, HIGHLY DESCRIPTIVE MARKS
The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must submit evidence to establish a sufficient relationship between the goods and/or services in connection with which the mark has acquired distinctiveness and the goods and/or services recited in the intent-
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To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.
*We do not stop here but this is a good start.
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