Trademark Blog

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.

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A trademark that is primarily merely a surname is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has acquired distinctiveness or “secondary meaning” in the minds of the purchasing public.  A “surname” is also often referred to as a “last name” or “family name.”  Some very common examples of surnames include “Smith,” “Johnson,” “Williams,” and “Jones.”  However, there are millions of other surnames among the US population, many of which are shared by only a handful of people.  As such, it’s not always clear when a trademark would be considered primarily merely a surname.

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After you file your trademark application with the United States Patent and Trademark Office (USPTO), you may receive a trademark office action requesting that you provide a disclaimer of a particular element of your trademark.  Usually, the requested disclaimer is for words or phrases that comprise a portion of your trademark, but the request could also be to disclaim a design or portion of a design.  The good news is that dealing with a such a request is generally quite straightforward and non-controversial.

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A primarily geographically descriptive trademark (not to be confused with a geographically deceptively misdescriptive trademark) is only entitled to registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has become distinctive of the products or services listed in the trademark application.  If it has become distinctive, then it would be eligible for registration on the Principal Register.  I invite you to review my blog post titled “Supplemental Register vs. Principal Register – What is the Difference?” so that you understand the many important differences between the two registers and the rights afforded by each one.

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A deceptively misdescriptive trademark (as opposed to a deceptive trademark) is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Principal Register if it has acquired distinctiveness or “secondary meaning” in the minds of consumers.  Otherwise, a deceptively misdescriptive trademark is only entitled to registration on the Supplemental Register.  I encourage you to read my article titled “Supplemental Register vs. Principal Register – What is the Difference?” to learn more about the important distinctions between the two registers maintained by the USPTO.

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