The Trademark Office may reject your application for many reasons. Several of these have to do with the distinctiveness of your trademark. If you have a mark that is not inherently distinctive, you may need to seek registration on the Supplemental Register. However, there are some cases where a trademark gains “acquired distinctiveness,” also referred to as “secondary meaning.” This post will discuss the types of trademarks that can acquire distinctiveness, and methods of demonstrating that to the Trademark Office.
What Is Acquired Distinctiveness?
The strength of trademarks is determined by their distinctiveness. Simply put, the less the words in a trademark have to do with the products/services the trademark is used for, the stronger that trademark is. Generic terms, like the word TABLE when used to sell tables, do nothing to distinguish the brand from the product. That is why generic terms are not trademarks at all. On the other hand, APPLE for computers is a very strong trademark, because apples are fruit that have nothing to do with computers.
Some trademarks do not start off as distinctive, but can become distinctive over time. They become distinctive because consumers start to recognize and separate the brand from the products/services for which they are used. For example, the name AMERICAN AIRLINES is not a distinctive name. It says that they provide airline services in America. However, they have built a brand around that name over time. And now when you hear the name AMERICAN AIRLINES, you think specifically of that company.
There are several types of marks that can gain acquired distinctiveness. The most common type are those marks that are merely descriptive. Geographically descriptive marks, like the AMERICAN AIRLINES example above, can also gain secondary meaning. Also, marks that are primarily a surname, such as MCDONALD’S, can become distinctive too.
The Section 2(f) Claim
If your application is rejected for one of the reasons above, you may be able to make a claim of acquired distinctiveness. This is called making a Section 2(f) claim. The Lanham Act Section 2(f) allows for the registration of trademarks that have acquired secondary meaning. There are a few different ways that you can make the Section 2(f) claim of acquired distinctiveness.
The first way that you can make a claim under Section 2(f) is if you have use in commerce of your trademark of at least 5 years. In most cases, a claim of five years’ use of a trademark is acceptable evidence of acquired distinctiveness. However, the Trademark Office may not accept this claim if you have a highly descriptive trademark.
Another way to claim acquired distinctiveness under Section 2(f) is to base that claim on a prior registration. If you have one or more prior registrations for the same mark for goods or services that are related, then you can cite to those registrations as evidence that your mark has acquired distinctiveness.
Finally, the last and most difficult way to make a Section 2(f) claim is by providing actual evidence of acquired distinctiveness. There are many types of evidence you might use for this. For example, you may provide advertising expenditure figures, consumer surveys, or market research. You need to find a way to show that your trademark has become understood as a brand in the minds of the purchasing public.
If your claim is successful, your application can move forward and your trademark may register on the Principal Register. If not, you may have to settle for registration on the Supplemental Register.
Do You Need Assistance Making a Claim of Acquired Distinctiveness?
If your application has been rejected because your trademark is not sufficiently distinctive, let me assist you with that. I am happy to take a look at the office action you received free of charge, so please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
