A major requirement of trademarks is that they be distinctive, and to be registrable at times you may have to make a claim of acquired distinctiveness. If this is accomplished, a trademark will enjoy nearly the same level of protection as the strongest trademarks.
Establishing acquired distinctiveness is not always an easy process. To reach this threshold it may require evidence of extensive promotion of the trademark in commerce to convince the U.S. Patent and Trademark Office (USPTO) examining attorney. For brand owners who didn’t start with a strong trademark, however, it’s an essential step in fully protecting a trademark.
What is Acquired Distinctiveness?
The USPTO now approves around 250,000 trademarks for registration every year. The majority of these are listed on the Principal Register, and the one commonality among these trademark is that they are distinctive. This means they can effectively help consumers differentiate the products and services of one company from another.
Many approved trademark registrations are inherently distinctive. This means they’re prima facie registrable because consumers would immediately recognize them as source indicators rather than descriptors. Trademarks that are incapable of doing this can work towards creating a secondary meaning in the minds of consumers, and if they’re successful, the trademark is then said to have acquired distinctiveness.
The following are examples of brands whose trademarks have developed secondary meaning over the years:
- British Airways®
- American Airlines®
- International Business Machines® (IBM)
- Spic and Span®
- Best Buy®
Each of these trademarks are descriptive in nature, and this would typically preclude them from being listed on the Principal Register. After years of continued and exclusive use – likely along with millions in marketing dollars – each of these identifiers became associated with a particular brand and its products. This is how secondary meaning and acquired distinctiveness is garnered.
Once this occurs, a company can register their identifier with the USPTO and receive full protection from trademark infringement. This means they can secure a legal presumption of ownership, nationwide rights, and enjoy all the other benefits of registration to the Principal Register.
To prove acquired distinctiveness, the trademark must be in current use and cannot be a type of trademark that’s already considered distinctive (e.g. fanciful trademarks and arbitrary trademarks). The trademark also cannot be considered a generic trademark.
If these qualifications are met, it is possible for distinctiveness to be acquired. This is not a guarantee, however, and the applicant will likely have to present proof of its claim to the USPTO examining trademark attorney. Fortunately, a wide variety of evidence is acceptable in these situations.
Proving Acquired Distinctiveness Under Section 2(f)
While the difficulty in doing so can vary immensely, it’s theoretically possible for any descriptive trademark to acquire distinctiveness. If an office action issues claiming that your trademark is merely descriptive instead of distinctive, you may have the option of entering a Section 2(f) designation which is a claim of acquired distinctiveness.
At times merely entering the claim will get an application approved. In other instances, the examining attorney will require that you submit appropriate documentation proving that secondary meaning has been established in the minds of consumers. The goal of your evidence should be proving that your trademark is recognized as a source indicator of your products or services. The following evidentiary factors will be considered by the examining attorney.
If an applicant has preexisting registrations on the Principal Register for the same trademark, they can use these as evidence that distinctiveness has been acquired. This is often a strong piece of evidence, but there are issues that can arise.
If a trademark disclaimer was filed with the previous registration, for instance, the examiner may not consider it prima facie evidence. The issue of disclaimers only applies if the term which is alleged to be distinctive was previously disclaimed.
Five Years of Use
If a brand has used a trademark continuously and exclusively over a period of five years, this will serve as evidence that trademark distinctiveness has been acquired. USPTO examining attorneys will typically require additional proof, though, of established secondary meaning in consumers’ minds. Evidentiary standards are much higher if you’re seeking protection over ornamental features (e.g. designs, colors).
If other brands are using the same trademark within your industry – even if your use predates theirs – it becomes difficult to claim exclusivity. The five-year period of use, however, can commence at any time. Even if you never filed a trademark application, any period of continuous use exceeding five years will qualify.
The USPTO labels its third evidentiary standard simply as “Other Evidence.” This is a catchall category that essentially includes any type of proof that sufficiently supports the fact that your trademark has established secondary meaning in the minds of consumers. While innumerable items may fall into this classification, the following are the most common types of evidence accepted:
- Examples of media coverage.
- Declarations from industry insiders or consumers.
- Evidence of extensive advertising campaigns.
- Financial documents showing marketing expenditures.
- Consumer reaction studies.
- Professional market research.
- Survey evidence.
Applicants can submit one type of evidence or any combination of these types. While a single item of proof could be sufficient for showing distinctiveness in the minds of consumers, this is less likely to occur for trademarks that are more descriptive.
Acquiring Distinctiveness on the Supplemental Register
Many brand owners who hope that a trademark will acquire distinctiveness start by registering a trademark to the Supplemental Register. The is the USPTO’s secondary database reserved for trademarks that are not distinctive and not generic. This provides some federal trademark protection.
Seeking placement on the Supplemental Register is not required to later prove distinctiveness. Doing so is ideal, though, since having a registration for 5 years on the supplemental register will help your case. By registering your trademark to the supplemental register prior to acquiring distinctiveness, you’ll also gain the following benefits:
- You’ll show up in USPTO trademark searches which may prevent similar uses.
- Your competition cannot register items that are confusingly similar.
- You will be able to utilize the registered trademark symbol (®).
- Your registration can form the basis of international trademark
The Supplemental Register makes up a very small percentage of yearly trademark registrations. Only around 10,000 are approved every year. After five years on the supplemental register, like registrations to the principal register you’ll need to file a trademark renewal in order to maintain your rights. Prior to filing the renewal, you can first file a trademark application to the principal register claiming acquired distinctiveness. If granted, you may chose to abandon the supplemental registration rather than pay the renewal fees.
Hurdles for Descriptive Trademarks
Providing evidence of acquired distinctiveness is only one issue encountered by descriptive trademark owners. The problem with attempting to register any descriptive term is that competitors are typically averse to the idea. If you’re able to trademark a term that describes a characteristic of your product or service, your competition could face issues when marketing with similar terms.
If the USPTO examining trademark attorney feels that your brand identifier has acquired distinctiveness, it will be published in the Official Gazette for an opposition period. Your competitors or other parties with standing could oppose your registration at this point.
Letter of Protest
Even before the opposition period, a Letter of Protest can be sent by a third party prior to a trademark registration being published for opposition. This is an opportunity to present evidence to the USPTO examiner that a trademark should not be registered. The protestor is involved in nothing other than submission of the letter. Any evidence provided must stand on its own without further intervention.
If you’re attempting to claim acquired distinctiveness, the protest letter is likely to cite descriptiveness or a likelihood of confusion as reasons for refusal. Submissions must typically occur before the application is approved, and any letter received after the opposition period will be denied as untimely.
While any interested party can submit a Letter of Protest, a Trademark Opposition can only be sent by individuals or companies with standing to do so. “Standing” means they would be negatively affected if the trademark were to be registered. An opposition can be submitted at any time during the 30-day opposition period following publication in the Official Gazette.
Even if you’re able to establish secondary meaning in consumers’ minds and secure federal registration, you may still encounter issues. A Trademark Cancellation can be filed by an individual or business and if successful the trademark will be terminated. This is typically the last alternative other parties have short of trademark litigation.
Please feel free to contact us if you have any questions or need assistance proving that your trademark has acquired distinctiveness.