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).


Answering Office Actions

There are no canned answers on how to answer office actions for the refusals received because there are many refusals that are not typical refusals. Registration of a mark is specific to the facts involved. (See Function As A Mark for more Office Actions.) Some refusals are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted (see Acceptable Specimens for help in selecting a specimen). Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed (see Trademark Disclaimer Requirements). Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed.  Sometimes the only choice is amending to the Supplemental Register. It depends on what is being rejected and why.


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.



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