ACQUIRED DISTINCTIVENESS (UNDER SECTION 2(F))

What is acquired distinctiveness? When a product or services is distinctive as applied to the applicant’s goods or services in commerce. Acquired distinctiveness can be a way of overcoming a refusal for being merely descriptive. The desired effect of acquired distinctiveness is to shift the distinctiveness to the left in this chart (see red arrow).

Note that the red arrow does not go into the generic category. A generic mark and some highly descriptive marks would be incapable of acquiring distinctiveness.

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 or the trademark has acquired distinctiveness or secondary meaning in some other manner, the applicant may be able to apply to the USPTO Principal Register under Section 2(f) of 15 U.S.C. § 1052. See TMEP 1212 for more information on acquired distinctiveness under Section 2(f).

Opposition or Cancellation? If a mark is involved in an opposition or cancellation proceeding, acquired distinctiveness is measured at the time the proceeding is brought. Acquired distinctiveness and buyer recognition is to be tested in an opposition proceeding as of the date the issue is under consideration. The filing date is not a cutoff for any evidence developing after that time. Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007).

How Common Are Section 2(f) Claims?

According to a 2013 study, only about 2.3 percent of trademark registrations have established acquired distinctiveness in full or in part. (Graham, Stuart J. H., Hancock, Galen, Marco, Alan C. and Myers, Amanda F., The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights (January 31, 2013))

What Types of 2(f) Claims are Available?

Five different Section 2(f) claims are available on a trademark application made either in the original application or made in response to an office action (ROA).

1. §2(f), based on Use: "The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement."
2. §2(f), based on Prior Registration(s): "The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). ____________." (Enter registration number(s) for the same or similar marks. Do not use any commas within the number. If more than one entry, separate each with a space, with no punctuation. e.g., 1247873 1324638 1462387. If there are more than 3 numbers, add "and others" after the third number).
3. §2(f), based on evidence: "The mark has become distinctive of the goods/services, as demonstrated by the submitted evidence." Evidence to support this claim must be submitted separately, either electronically through the reliminary amendment form, which allows for attachment of up to 50 images, or through a traditional paper submission.
4. §2(f) IN PART, based on Use: "_______ has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." (Enter the appropriate word(s)).
5. §2(f) IN PART, based on Prior Registration(s): "______ has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). ____________." (In the first box, enter the appropriate word(s). In the second box, enter registration number(s) for the same or similar marks. Do not use any commas within the number. If more than one entry, separate each with a space, with no punctuation. e.g., 1247873 1324638 1462387. If there are more than 3 numbers, add "and others" after the third number).
6. §2(f), IN PART, based on evidence: "_______" has become distinctive of the goods/services, as demonstrated by the submitted evidence." Evidence to support this claim must be submitted separately, either electronically through the voluntary amendment form, which allows for attachment of up to 50 images, or through a traditional paper submission.

Note: If your mark is already registered on the Supplemental Register and you believe that you have acquired distinctiveness, give us a call at 1-651-500-7590 and we will help you with a declaration or an affidavit of acquired distinctiveness and a new registration to claim your distinctiveness and claim your increased rights available on the Principal Register. An Amendment from the Supplemental  Register to the Principal Register is not permitted under Trademark Rules for marks that have already registered even though lots of web sites and blogs talk about this possibility.

TMEP 1609.09   Amendment from Supplemental to Principal Register Not Permitted

A registration on the Supplemental Register may not be amended to the Principal Register.  If the owner of a registration wishes to seek registration on the Principal Register of a mark for which it owns a registration on the Supplemental Register, the owner must file a new application.  Under 15 U.S.C. §1062(a), a mark must be published for opposition before it can be registered on the Principal Register.

WHAT IS SECONDARY MEANING FOR A TRADEMARK?

The purpose and significance of secondary meaning may be described as follows: A term which is descriptive . . . may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer. 1 Nims, Unfair Competition and Trademarks at §37 (1947). This is what is known as secondary meaning. The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer (citations omitted). This may be an anonymous producer, since consumers often buy goods without knowing the personal identity or actual name of the manufacturer. Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972). (From TMEP 1212)

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

• The use of the words CHILDREN”S PLACE as a mark for a children’s store is highly descriptive. TCPIP Holding Co. v. Haar Communications, 244 F. 3d 88 - US: Court of Appeals, 2nd Circuit 2001.
• SURGICENTER for services rendered in an in and out surgical facility were found to be generic or highly descriptive. Surgicenters of America v. Medical Dental Surgeries, 601 F. 2d 1011 - US: Court of Appeals, 9th Circuit 1979.
• The word TAS-TEE or "tasty" as applied to salad dressing is highly descriptive. Henri's Food Products Co., Inc. v. Tasty Snacks, Inc., 817 F. 2d 1303 - US: Court of Appeals, 7th Circuit 1987.
• LAW & BUSINESS for business law seminar services is so "highly descriptive" that it is incapable of serving as a mark and is unregisterable on the Supplemental Register. In re Harcourt Brace Jovanovich, Inc., 222 USPQ (BNA) 820 (TTAB 1984) (citing other TTAB cases).
• CUSTOM-BLENDED for blended gasoline it is so highly descriptive that it is incapable of becoming distinctive.I Application of Sun Oil Co., 426 F.2d 401, 403, 57 CCPA 1147, 1149 (1970)
• SWEATS is a generic or highly descriptive term for sweatpants and sweatshirts.

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).

Acquiring Distinctiveness and Office Action Refusals

Some trademarks that would not ordinarily be registrable are registrable if they have acquired distinctiveness and if the application is used correctly. Properly submitting a claim of acquired distinctiveness with an original trademark application may be a better strategy than waiting to get an office action and then pursuing it. Call us if you believe that your mark is not inherently distinctive and we can help you with your application. Just because a form service can get all the blanks filled in does not mean that they have applied the law correctly for your trademark. Give us a call at 1-651-500-7590. We can help you apply correctly and help you get a strong trademark rather than just a filled in application.

Not every office action has an answer, some proposed trademark applications just do not comply with U.S. Trademark Law and do not qualify for common law protection because they  are conflicting marks, lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning. Sometimes a new application can solve the problem, sometimes the mark must be incorporated with other elements to add distinctiveness.

If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. The cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA), Amendment to Allege Use (AAU), or Statement of Use (SOU) may be less than what you think and the time saved may be months or years.

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.