Acquired Distinctiveness under Section 2(f)
Registering a trademark with the U.S. Patent and Trademark Office (PTO) has numerous benefits for individuals and businesses, and when a trademark application is rejected based on grounds that the trademark is merely-descriptive or non-distinctive, it is not an insurmountable road block. When such an Office Action is received, an applicant should consider whether to file a response to the office action arguing that the trademark at issue has acquired distinctiveness under the Trademark Act, 15 U.S.C. §1052 (f).
If you are considering filing a response to such an Office Action including submission of proof of acquired distinctiveness, we can provide the information and representation you need to expedite the process and achieve the best possible outcome.
What Is Acquired Distinctiveness?
In order to qualify for trademark protection, a trademark must be distinctive or unique enough such that it can function as a trademark. For example, Apple computers are easier to differentiate from other computers on the market due to the unique name and logo. While Apple could not function as a trademark for the sale of apples, it is a very distinctive trademark when used in relation to the sale of computers. Essentially, the more unique your trademark, the “stronger” it will be in the long run. “Weak” trademarks, on the other hand, are those that are too generic or merely descriptive to differentiate from the goods or services at issue.
However, if a trademark is used continuously and extensively over long period of time, a “weak” trademark may become familiar to consumers and ultimately acquire distinctiveness, also known as secondary meaning. For example, one of the most well-known examples of a generic name gaining secondary meaning over time is the trademark McDonalds. While it was originally seen as a surname and therefore not eligible for trademark protection, once the fast-food restaurant gained popularity, the name obtained a secondary meaning in the minds of consumers who could differentiate between the surname and the chain of restaurants.
Proving Acquired Distinctiveness
In the event that a trademark application receives an initial refusal, an applicant can provide actual evidence that the applied-for trademark has gained a secondary meaning associated with the applicant’s goods and services through extensive use and promotion. The following types of evidence may help secure protection under Trademark Act, 15 U.S.C. §1052 (f):
- Prior registration of the same trademark on the Principal Register
- At least five years of continuous, exclusive use of the trademark
- Evidence of significant advertising expenses
- Examples of media coverage
- Declarations from consumers or others in the industry
Please feel free to contact us if you have any questions or need assistance proving that your trademark has acquired distinctiveness.