Every trademark should be unique and distinctive, one of the core examination aspects the USPTO considers before granting an applicant a trademark registration.
Only trademarks that inherently stand out or have gained distinctiveness can be registered on the Principal Register, securing complete trademark protection.
Before submitting your application for federal trademark registration, it is essential that you fulfil this requirement to reduce your chances of a trademark refusal. In this blog, we will cover in depth the concept of acquired distinctiveness and everything associated with it, with real-life examples of securing the exclusive rights related to your trademark.
Types of Trademarks
Before we dive into the topic in detail, it is crucial to understand the types of marks.
Fanciful –An entirely invented mark that is inherently distinctive. Example: “Kodak” for a photography and imaging company.
Suggestive – Marks that subtly convey characteristics of products or services, requiring consumer imagination. An example is “WhisperSoft” for noise-canceling headphones. A suggestive mark may be inherently distinctive.
Descriptive- Descriptive trademarks directly describe the characteristics of products or services. An example is “SoftCushion” for a line of comfortable insoles. Descriptive terms are not recognized as inherently distinctive trademarks.
Generic- Generic terms are common names for products or services and are not distinctive enough to function as a trademark—for example: Headache Medicine for medication.
Arbitrary– Arbitrary trademarks use common words unrelated to the product or service. An example is “Apple” for a technology company.
Generally, arbitrary, fanciful, and suggestive marks are considered distinctive and strong trademarks. Such marks are registered on the Principal Register at the USPTO, while descriptive marks often end up on the Supplemental Register. To learn more about the difference between the two registers, check out this guide.
However, if a mark has been used exclusively for at least five years and gained recognition in the market, it may be argued to have acquired distinctiveness and be eligible for registration on the Principal Register, as governed by 15 U.S.C. § 1052(f).
Understanding Acquired Distinctiveness
Acquired distinctiveness, also known as secondary meaning, is a concept in trademark law where a term or symbol that is initially descriptive or lacks inherent distinctiveness gains recognition and distinctiveness through actual evidence of extensive use in the marketplace. Section 2(f) of the Lanham Act provides the legal framework for proving acquired distinctiveness, offering a pathway for non-distinctive marks to gain recognition and safeguarding.
In essence, a mark becomes associated with a specific source or brand in the minds of consumers, even if the term itself is initially generic or descriptive.
Here are the key components to know
1. Initiation of the Claim:
This claim of distinctiveness begins when trademark owners or applicants acknowledge that their mark may be initially descriptive or lacking inherent distinctiveness. To overcome this, they invoke Section 2(f) to assert that the mark has acquired distinctiveness through extensive use.
2. Submission of Evidence:
Substantiating a Section 2(f) claim involves presenting compelling evidence demonstrating the mark’s association with a specific brand in the minds of consumers. The burden of proof is on the applicant to show that consumers identify the applied-for mark as a source indicator. The types of evidence offered are crucial in proving that the mark has developed a secondary meaning. Examples of proof of distinctiveness include survey evidence, consumer reaction studies, advertising expenditures, sales figures, and other consumer statements.
3. Duration and Continuity of Use:
A fundamental factor is the duration and continuous use of the mark in commerce. The longer and more consistently a mark has been used, the stronger the argument for acquired distinctiveness. The USPTO will accept, as prima facie evidence, a verified statement by the applicant that a mark has five or more years of continuous and exclusive use.
4. Consumer Recognition:
Evidence should illustrate that consumers recognize the mark as an identifier of a particular brand, transcending its literal or descriptive meaning.
5. Advertising and Marketing Efforts:
Significant investment in advertising and marketing campaigns highlighting the mark’s association with a specific brand can bolster the claim for acquired distinctiveness.
6. Exclusivity of Use:
Demonstrating exclusive use of the mark in the marketplace adds weight to the argument regarding the applicant’s claim of ownership. The exclusivity reinforces that the mark has become uniquely associated with a specific source.
1. Examiner’s Evaluation:
During the trademark application process, the examining attorney at the United States Patent and Trademark Office (USPTO) assesses the Section 2(f) claim. They evaluate the evidence provided to determine if the mark has indeed acquired distinctiveness.
2. Office Action Responses:
If the examiner raises concerns or requests additional evidence through an Office Action, the applicant must respond persuasively to overcome the objections.
3. Potential Appeals:
In cases where the examiner maintains objections, applicants have the option to appeal or amend their application to address concerns at the Trademark Trial and Appeal Board.
1. Early Planning:
Brand owners are encouraged to plan for acquired distinctiveness early in the life of the mark, strategically documenting and preserving evidence of use and consumer recognition.
2. Comprehensive Documentation:
Maintaining comprehensive records of marketing materials, consumer feedback, and the mark’s evolution over time is vital in building a robust case for acquired distinctiveness.
3. Legal Assistance:
Given the complexities of trademark law and the Section 2(f) process, seeking legal assistance from trademark attorneys with expertise in proving acquired distinctiveness is advisable.
Proving acquired distinctiveness under Section 2(f) is a meticulous and evidence-driven process requiring legal strategy, consumer recognition, and thorough documentation. Successful navigation of this process allows brands to transform non-distinctive marks into protectable and valuable assets.
Why a §2(f) Response May Be Rejected:
The Examining Attorney may reject claims of acquired distinctiveness underinsufficient evidence demonstratesonstrating public recognition of the mark as a source identifier. Such refusals are typically based on the evidentiary record, presenting challenges that require careful consideration.
- Weak Incorporation in Marketing Materials:
- Issue: The applied-for mark might not be effectively incorporated into advertising, lacking visibility as a trademark.
- Solution: Ensure that marketing materials prominently feature and highlight the applied-for mark as a distinct identifier.
- Statements from Customers:
- Issue: Affidavits from customers may lack persuasive value if biased or do not represent the average consumer.
- Solution: Seek diverse and unbiased customer statements, ensuring a more accurate reflection of how the average consumer perceives the mark.
- Survey and Market Research Challenges:
- Issue: Survey data may be rejected due to inadequate controls, irrelevant questions, or repurposed research materials.
- Solution: Conduct surveys with proper controls, relevant questions, and original research materials to enhance credibility.
- Failure to Establish Separateness:
- Issue: In cases like In re Los Angeles Tourism & Convention Board, failure to prove that design features create a separate impression from the words.
- Solution: Clearly demonstrate that design elements distinguish the mark, making it more than just descriptive wording.
Examples of Brands that Acquired Distinctiveness
Look at these brands—British Airways®, American Airlines®, IBM, Spic and Span®, Best Buy®, Sharp®. Initially descriptive, they wouldn’t easily qualify for the Principal Register. However, after years of exclusive use and substantial marketing, each became strongly associated with its brand and products. This is how secondary meaning and distinctiveness are achieved.
Once this happens, a company can register their brand with the USPTO, completing full protection from trademark infringement. This includes a legal presumption of ownership, nationwide rights, and all the other perks of being listed on the Principal Register.
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
To know more about Sahil Malhotra — Click Here