ACQUIRED DISTINCTIVENESS (UNDER SECTION 2(F))

A trademark may start off initially as a weak mark but may through use and advertising acquire distinctiveness and function as  a trademark. Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 641 (TTAB 1977). An applicant may 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 2(f).


Note: If your mark is already registered on the Supplemental Register and you believe that you have acquired distinctiveness, give us a call at (651) 500-7590 and we will help you with a new registration and claim of acquired distinctiveness to document your distinctiveness and claim your increased rights available on the Principal Register. Amendment from the Supplemental  Register to the Principal Register is not permitted under Trademark Rules. (TMEP 1609.09 Amendment from Supplemental to Principal Register Not Permitted.)


Need an affidavit of acquired distinctiveness? We have a large number of affidavits (our own and others) that have been successful in obtaining a Section 2(f) or 2(f) in part claim. Unfortunately someone else’s claim can only be used as an example of how to prove acquired distinctiveness under a certain set of facts but there are similarities for different types of fact patterns that can improve the chances of success. There are also a number of different fact dependent strategies for how and when to submit evidence (with the application or only if the examiner requires it?). The more highly descriptive the matter is, the more difficult it is to show acquired distinctiveness.

If your trademark has value and you want to use our experience in trademark law to your advantage, call us at (651) 500-7590 or email us at WP@NJP.legal. We suggest using caution in hiring a trademark attorney. Many firms have very poor records for getting marks registered even though they have filed a large number of applications.


Acquired Distinctiveness Is A Threshold Test for Trademark Strength and Protection for Descriptive Marks That Are Not Inherently Distinctive

The inquiry into whether a mark that is not inherently distinctive has acquired distinctiveness is a threshold issue of trademark validity. "Acquired distinctiveness" or "`secondary meaning' is merely a label given that quantum of `strength' sufficient to activate some terms into life as a trademark.'" McCarthy On Trademarks And Unfair Competition § 11:82 (4th ed. 2010); see also McCarthy On Trademarks And Unfair Competition § 15:25. Once acquired distinctiveness is established, the scope of protection, or strength, accorded a mark is commensurate with the degree of consumer association that is proven. Id.; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 USPQ 808, 814 n. 12 (9th Cir. 1979); see also Jiffy, Inc. v. Jordan Industries, Inc., 481 F.2d 1323, 179 USPQ 169, 170 (CCPA 1973) ("Development of association with the user as a source of the goods through continued sales and advertising of the goods may turn a `weak' mark into a strong, distinctive trademark"); Standard International Corp. v. American Sponge and Chamois Co., Inc., 394 F.2d 599, 157 USPQ 630, 631 (CCPA 1968) ("a mark which is initially a weak one may, by reason of subsequent use and promotion, acquire such distinctiveness that it can function as a significant indication of a particular producer as source of the goods with which it is used"); Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 641 (TTAB 1977) ("The registrations alone are incompetent to establish any facts with regard to the nature or extent of opposer's use and advertising of its trademarks or any reputation they enjoy or what purchasers' reactions to them may be"); Martha White, Inc. v. American Bakeries Co., 157 USPQ 215, 217 (TTAB 1968) (opposer's registration is not evidence of the nature and extent of opposer's use and advertising of its mark and, thus, is not probative of consumer reaction to the mark no matter how long it has been registered).

In re Zurich Insurance Company Ltd. (TTAB 2010 This decision is not a precedent of the TTAB )



 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).



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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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Steps to a Patent    How to Patent An Invention

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Chart of Patent vs. Trade Secret

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Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

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Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions

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Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

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Why Not Just Patents? Functional Trademarks   How to Trademark     

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TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

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Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

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Ornamental Refusal  Standard TTAB Protective Order

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What Does Published for Opposition Mean?

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Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

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ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

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Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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