The concept of “acquired distinctiveness” (also referred to as “secondary meaning”) is extremely important when it comes to registering a non-distinctive trademark with the United States Patent and Trademark Office (USPTO). The following are common examples of non-distinctive trademarks:
- Merely descriptive trademarks
- Trademarks that are primarily merely surnames
- Deceptively misdescriptive trademarks
- Primarily geographically descriptive trademarks
Non-distinctive trademarks are normally only eligible for registration on the Supplemental Register (as opposed to the Principal Register). But, there are circumstances under which non-distinctive marks can be registered on the Principal Register. Those circumstances have to do with the concept of acquired distinctiveness under what is known as Section 2(f) of the Trademark Act.
What is Section 2(f) of the Trademark Act?
Section 2(f) is what allows for the registration of non-distinctive trademarks on the Principal Register. Section 2(f) basically states that if a non-distinctive trademark has become distinctive of the owner’s products/services, then it’s eligible for registration on the Principal Register. In other words, if your non-distinctive mark has acquired distinctiveness or “secondary meaning” in the minds of the relevant segment of the general public, then it is no longer considered “non-distinctive” and is entitled to the identical benefits and protections afforded any other mark registered on the Principal Register.
But, how can the owner of a non-distinctive trademark take advantage of Section 2(f)? Well, if you’ve received a trademark office action indicating that your mark is being refused registration on the Principal Register because it falls into one of the categories listed above, you potentially have three ways to make a Section 2(f) claim of acquired distinctiveness.
Option #1 – Acquired Distinctiveness Based on Five Years of Use in Commerce
If your trademark has been in “substantially exclusive and continuous” use in commerce for at least the previous five years in connection with the products/services listed in your application, you can make a claim of acquired distinctiveness under Section 2(f). In the vast majority of cases, the examining attorney will accept a 2(f) claim based on five years of use and your trademark will be published for opposition. However, if the examining attorney finds that your use of the mark hasn’t been “substantially exclusive” after performing his/her own research and investigation, then the claim of acquired distinctiveness will be rejected. At that point, you could choose to (1) submit a trademark appeal with the Trademark Trial and Appeal Board (TTAB), (2) amend your application to seek registration of your mark on the Supplemental Register, or (3) assert a claim of acquired distinctiveness based on actual evidence (see Option #2).
Option #2 – Acquired Distinctiveness Based on Actual Evidence
In the event your trademark hasn’t been in use in commerce for at least the previous five years, or if the examining attorney refuses to accept your 2(f) claim based on five years of use, you have the option of making a claim of acquired distinctiveness based on actual evidence. Essentially, you would be trying to demonstrate to the examining attorney that your mark has acquired the requisite secondary meaning in the minds of consumers. The examining attorney would normally be expecting evidence in the nature of revenues earned, advertising expenditures, customer data, unsolicited media coverage, market surveys, customer declarations, and the geographic reach of your products/services. If your evidence clearly shows that your mark has acquired distinctiveness, then the examining attorney will approve your trademark for publication. However, it’s exceedingly rare that the examining attorney will accept a 2(f) claim based on evidence. Therefore, it often makes more sense just to amend your application to the Supplemental Register and then reapply to register your mark on the Principal Register once you have five years of substantially continuous use.
Option #3 – Acquired Distinctiveness Based On a Prior Registration
If you already own an existing registration on the Principal Register for the same (or very similar) trademark for related products/services, you can make a claim of acquired distinctiveness under Section 2(f) based on your prior registration. This is true regardless of whether your trademark application was filed on an in-use basis, on an intent-to-use basis, under Section 44(d) or 44(e), or through the Madrid Protocol. Assuming that your mark is essentially the same as the mark in your prior registration, and the products/services in your application are sufficiently related to the products/services in your prior registration, the examining attorney will almost definitely approve your trademark for publication. So, this is an excellent route to take if you happen to own an applicable prior registration.
Questions About Section 2(f)?
I’m experienced US trademark attorney Morris Turek. If your trademark has been refused registration on the Principal Register and you’re wondering whether you can make a claim of acquired distinctiveness under Section 2(f), please contact me at your earliest convenience for your free consultation. You can email me at firstname.lastname@example.org, call me at (314) 749-4059, or submit the contact form located toward the bottom of this page. I look forward to speaking with you soon.