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:

  1. Specific dollar sales under the mark,
  2. Advertising figures,
  3. Samples of advertising,  
  4. Consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and
  5. Any other evidence that establishes the distinctiveness of the mark as an indicator of source.

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

 Third-party registrations are admissible and competent to negate a claim of exclusive rights and the disclaimers are evidence, albeit not conclusive, of descriptiveness of the term. Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562 (Fed.Cir.1987). (internal citations omitted)

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-for mark is highly descriptive of applicant’s goods and/or services, the allegation of five years’ use is insufficient to show acquired distinctiveness.  In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a).

 


EXAMPLES OF WEAK, HIGHLY DESCRIPTIVE MARKS


ACQUIRED DISTINCTIVENESS-INTENT TO USE APPLICATIONS

An intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an amendment to allege use or a statement of use if applicant can establish that, as a result of 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, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a).  

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:

 (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-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. In re Rogers, 53 USPQ2d 1741 (TTAB 1999).




Not Just Patents ® Legal Services provides a very economical package for USPTO Trademark Registration and provides domestic representation for foreign applicants. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.

We suggest our service and our plan-a Not Just Patents Five-Part Verification as part of a Plan for A Successful Trademark:

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:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

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.

If you have already received a refusal, we can provide services that include a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.


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