If a trademark is not inherently distinctive, a trademark applicant may still register it on the Principal Register if it can show it has acquired distinctiveness (or secondary meaning). See our webpage entitled, What Is Acquired Distinctiveness and Secondary Meaning for the three types of evidence typically accepted by the United States Patent & Trademark Office (USPTO) to show that a mark has acquired distinctiveness.
At times, a claim of distinctiveness may apply to a portion of a trademark (also referred to as a claim of §2(f) "in part"). The standards for establishing acquired distinctiveness are the same regardless of whether the claim is for the entire mark or a portion of the trademark. It is the responsibility of the trademark applicant to identify the portion of the mark for which distinctiveness is claimed. This portion should present a separate commercial impression apart from the other elements of the trademark. In most circumstances, claiming acquired distinctiveness in part will occur when descriptive matter is combined with inherently distinctive matter. In this case, the descriptive matter would have to present a distinct commercial impression apart from the other elements of the mark.
Another example of a circumstance where there could be a §2(f) claim in part would be if a trademark is comprised of geographically descriptive matter combined with a distinctive element and the descriptive matter presents a separate commercial impression. For example, if the mark is NEW YORK BOLD for apparel and if the applicant designs the clothing in New York and the trademark applicant can show secondary meaning for the term New York, then the claim must be limited to the term New York because the term BOLD is inherently distinctive for apparel.
This rule is also applicable if the mark is comprised of a surname and the applicant can demonstrate secondary meaning as to the surname. An example would be if the goods were jewelry and the mark was GOLDMAN JEWELRY, but previously the applicant only used the mark GOLDMAN to advertise its jewelry. Then, a §2(f) in part claim would be asserted and a disclaimer of the term "jewelry" would be appropriate.
Alleging a claim of acquired distinctiveness in part is typical in the situation where an Examiner requests a disclaimer for the descriptive term and the trademark applicant can show secondary meaning for the term requiring a disclaimer. In fact, an Examiner should suggest a claim under Section 2(f) of the Trademark Act if the circumstances indicate that this would be an appropriate claim. This situation may arise where an applicant cites dates of use in commerce for at least five years prior to its claim of acquired distinctiveness. Should the Applicant submit evidence of acquired distinctiveness and if the Examining Attorney finds that the evidence is insufficient, the Examiner should suggest that the applicant submit additional evidence. See Trademark Manual of Examining Procedure §1212.02(g) for more information regarding the guidance an Examiner should provide when an applicant's evidence is insufficient to prove acquired distinctiveness.
The type and amount of evidence needed to satisfy the standard for secondary meaning will depend on the nature of the mark and the facts in the record. The more descriptive the mark is in relationship to the goods and services, the more evidence that will be required. In addition, if the use was not exclusive, the burden of proof will be particularly heavy to show acquired distinctivenss. Keep in mind that the use does not have to be 100 percent exclusive, but instead "substantially exclusive". This will allow for use by third parties of inconsequential or infringing use that does not invalidate the trademark applicant's claim for acquired distinctiveness per se. Each case will be decided on its unique set of facts. However, numerous third party users will seriously impact the applicant's claim of distinctiveness.
If you have questions concerning your trademark and whether it is inherently distinctive or whether it has acquired distinctiveness via a claim of ownership of a prior registration on the Principal Register, or through actual evidence of secondary meaning or through five years of substantially exclusive use in commerce, please contact our office for a courtesy consultation. We would be happy to speak with you regarding a trademark matter or another intellectual property matter.