Trademark 2f Acquired Distinctiveness:

Getting To The Principal Register

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Getting To The Principal Register

Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), permits the registration of a mark that is not inherently distinctive on the Principal Register upon proof that the mark has acquired distinctiveness in relation to the applicant’s goods or services in commerce.  A claim of acquired distinctiveness may apply to the entire mark (a claim of 2(f)) or a portion of the mark (a claim of §2(f) “in part”).

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Being able to show acquired distinctiveness can take a trademark application from being refused for descriptiveness and only registerable on the Supplemental Register to being registered on the Principal Register, a huge increase in presumptive statutory rights. (See red arrow on chart below for illustration of acquired distinctiveness shift.)

"Distinctiveness is acquired by `substantially exclusive and continuous use' of the mark in commerce." In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing, Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984). An applicant must show that the primary significance of the product configuration in the minds of consumers is not the product but the source of that product in order to establish acquired distinctiveness. See In re, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re Ennco Display Systems Inc., 56 USPQ2d 1279 (TTAB 2000).

Acquired distinctiveness may be shown by direct and/or circumstantial evidence. Direct evidence includes actual testimony, declarations or surveys of consumers as to their state of mind. Circumstantial evidence is evidence from which consumer association might be inferred, such as years of use, extensive amount of sales and advertising, and any similar evidence showing wide exposure of the mark to consumers. There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness, however, the burden is heavier for product configurations. IIn re Ennco Display Systems Inc., 56 USPQ2d 1279 (TTAB 2000).

The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. Typically, more evidence is required where a mark is so highly descriptive, that purchasers seeing the matter in relation to the named goods would be less likely to believe that it indicates source in any one party.  Evidence that third parties in applicant's field use the same or substantially the same wording as the alleged mark, or very similar wording as the mark . . . tends to indicate the mark has not acquired distinctiveness. In re White Jasmine (TTAB 2013) (internal citation omitted).

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 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).

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).

§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(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).

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§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.

§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)).

§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).

§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.

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).

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, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).

Evidence of Acquired Distinctiveness

Evidence of acquired distinctiveness may include:

Specific dollar sales under the mark,

Advertising figures,

Samples of advertising,  

Consumer or dealer statements of recognition of the mark as a source identifier, affidavits [or declarations], and

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.

(Not Just Patents has compiled and/or created examples of declaration or affidavits of acquired distinctiveness for many types of goods/services. Please call us for help on establishing acquired distinctiveness for descriptive refusals or for ‘converting’ your Supplemental Registration to a Principal Registration. This ‘conversion’ requires a new application.)

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.


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, facts really go matter.

Not Just Patents can develop a declaration or affidavit of acquired distinctiveness for use with your trademark application (if the facts will support it), an assertion may be enough or a declaration may be required. Each case before the trademark examiner and/or the TTAB on appeal is dependent on the facts of the particular mark and there is no guarantee that a mark that is refused for being descriptive under Section 2(e)(1) can be registered on the Principal Register.

Each trademark application is only guaranteed one nonfinal action and one final action, calling us sooner rather than later will improve the chances that your trademark will register. Give us a call at 1-651-500-7590.

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 (the trademark is generic). Sometimes a new application can solve the problem, sometimes the mark must be incorporated with other elements to add distinctiveness.

How can you Avoid Descriptive Trademarks?

Verify Trademark Strength

Two factors affect the overall strength of a trademark: its inherent strength based on the nature of the mark itself  (its inherent potential) and its commercial strength, based on the marketplace recognition value of the mark (how much strength is acquired). See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011).

Nature of the mark itself: “The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).

Nonuse by others: “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).

Weak marks are generally descriptive or suggestive or common words where the use of the mark (acquired commercial strength) has not or does not overcome the mark's intrinsic or inherent shortcomings. Weak marks are often accorded a narrower scope of protection.

Ordinary strength marks that are neither weak nor exceptionally strong are entitled to the same scope of protection as other registered marks of the same character, not to the broader protection which an exceptionally strong or famous mark would merit.

Strong marks or famous marks are given broader protection. Fame would play a dominant role in the likelihood-of-confusion analysis because famous marks enjoy a broad scope of protection. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).

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