One of the most common reasons why a trademark application may be refused on the Principal Register of the United States Patent & Trademark Office (USPTO) is because the mark is not inherently distinctive and it is lacking acquired distinctiveness or secondary meaning. Acquired distinctiveness and secondary meaning are often used interchangeably and will be used interchangeably for the purposes of this discussion. The Principal Register of the U.S. Trademark Office is reserved for marks that are either inherently distinctive or have acquired distinctiveness. Trademarks that are merely descriptive of the goods or services and lacking in acquired distinctiveness or not inherently distinctive will only be registered on the Supplemental Register. For more information on the benefits of the different trademark registers, see our web page entitled Filing Your Trademark On The Principal Register And The Supplemental Register. However, if acquired distinctiveness is proven, then it can be registered under §2(f) of the Trademark Act, 15 U.S.C.§1052(f).
A term that is descriptive may acquire unique significance overtime through the trademark owner’s usage. If this occurs, then the relevant public will associate the trademark with a particular source, manufacturer or producer. There are three general types of evidence a trademark owner can submit to the Trademark Office to demonstrate that a trademark has acquired distinctiveness. These categories include prior registrations as proof of distinctiveness, five years of use of the trademark in commerce as proof of distinctiveness, and actual evidence of distinctiveness.
Prior RegistrationsA trademark applicant can offer proof of distinctiveness through ownership of one or more prior registrations of the same mark on the Principal Register. However, the USPTO may require additional evidence of distinctiveness. For example, if the prior registration had to disclaim the term for which the applicant is now attempting to show distinctiveness, the prior registration will not be accepted as prima facie evidence of distinctiveness. Small or minor deviations in the marks may be acceptable, but the marks must be found to be “legal equivalents”. The next step is to determine if the goods or services identified in the application are similar enough to the goods or services named in the prior registration. Lastly, the prior registration must be in full force and not expired or cancelled.
Five Years of UseThis claim of five years of use of the mark must be substantially exclusive and continuous use. If consumers are faced with multiple independent users of the same trademark, a claim of acquired distinctiveness will not prevail. Multiple third-party users, even if junior users, will negatively impact an examiner’s determination to accept a party’s claim of distinctiveness. The five-year period can commence before the filing of the trademark application and run until the date the claim is made. If the mark is highly descriptive, the burden is heavier for proving secondary meaning. For example, the majority of surnames can submit the statement of five years use and this will be sufficient to prove secondary meaning. But if the mark consists of mere ornamentation, overall color of a product, or nondistinctive product container shapes, evidence of five years use is not sufficient to show acquired distinctiveness.
Actual EvidenceActual evidence of acquired distinctiveness can take the form of affidavits, declarations (pursuant to 37 C.F.R. §2.20), depositions, or other types of evidence. The objective is to demonstrate the extent, duration, and nature of the use of the mark. Examples of evidence include an affidavit from a senior marketing representative attesting to the advertising expenditures, a declaration of a company employee alleging the duration of years the mark has been used with the goods or services and the methods of advertising, or a deposition of the president of the company supporting high sales figures along with substantially exclusive and continuous use. Other persuasive evidence includes affidavits or declarations claiming consumer recognition of the mark as a source indicator, survey evidence, consumer reaction studies, and market research.
Determining whether you will be able to successfully claim that your trademark has acquired distinctiveness or secondary meaning is not always easy. Keep in mind that the primary significance of the mark in the minds of consumers, must be the source of the goods or services. The New York trademark lawyers at our firm would be happy to assist you in evaluating whether the use of your trademark has resulted in acquired distinctiveness.