What is a trademark with acquired distinctiveness?
Some trademarks are inherently distinctive from the start and others are not. Inherently distinctive marks generally include marks that are arbitrary (meaning of mark has no relation to goods/services) or fanciful (made up word) or suggestive (meaning of mark suggest a feature of goods/services). Marks that are descriptive of the products will encounter obstacles to registration, such an Office Action refusing registration on the Principal Register.
In certain cases where the applied-for mark is not as descriptive – at least in the mind of the USPTO trademark examining attorney – then the option for registration on the Supplemental Register may be suggested. To be registered on the Principal Register, such descriptive marks must have acquired distinctiveness.
How does a mark acquire distinctiveness or secondary meaning?
“Acquire” means to gain. So, a mark that has acquired distinctiveness has gained something – it has become more distinctive. In most cases, this gain of additional distinctiveness takes time, typically over a period of years. It is a process of change that requires time and effort since a descriptive mark would not become distinctive overnight. “Acquired distinctiveness” is also known as “secondary meaning,” implying that the mark has gained a significance among the consuming public that is different than the dictionary meaning of the mark.
What types of evidence would establish acquired distinctiveness?
A mark that is not inherently distinctive must gain proof that it has become distinctive in relation to the trademark owner’s goods or services. This is also known as Section 2(f) evidence [15 USC § 1052(f)]. To make a Section 2(f) claim, three main types of evidence may be used to show proof of distinctiveness according to 37 CFR § 2.41:
- Prior registrations of the same mark on the Principal Register for sufficiently similar goods or services;
- Five years of substantially exclusive and continuous use [aka Section 2(f) claim]; and
- Actual evidence showing the duration, extent and nature of use of a mark.
The satisfactory level of distinctiveness for registration on the Principal Register is a question of fact that will depend on the specific factors of each individual mark. Marks that are highly descriptive will require greater evidence than those are less descriptive.
What other pieces of actual evidence may serve as proof of distinctiveness?
TMEP § 1212.06 discusses various types of evidence that may be used to establish acquired distinctiveness, including:
- length of time of use of mark
- advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
- advertising expenditures
- affidavits or declarations by the trademark owner
- survey evidence, market research, consumer reaction studies
- dealer and consumer statements indicating recognition of the applied-for mark as a trademark
- other miscellaneous factors, especially evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.
Keep in mind that prior registrations or 5-year usage may provide a presumption of distinctiveness, but will not automatically ensure a sufficient level for registration on the Principal Register. On a case-by-case basis, the trademark examining attorney may still require additional pieces of actual evidence, which may be challenging to show.
What to do after registering on the Supplemental Register
If your mark is registered on the Supplemental Register, a new application must be filed if you seek registration on the Principal Register. It would be more efficient to include the Section 2(f) evidences upfront in your Principal Register application. If the applicant does not have any prior registrations or at least 5-year usage, careful consideration should be given to the pieces of actual evidence that might help establish a sufficient level of distinctiveness.