Acquired Distinctiveness

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Acquired Distinctiveness

Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness/Secondary Meaning

If registration is refused under Sections 2(e)(1), 2(e)(2), or 2(e)(4) of the Trademark Act, or on grounds pertaining to other non-inherently distinctive subject matter (e.g., product or container configurations, color marks, or marks that comprise matter that is purely ornamental), the Examiner should inform applicant in the Office action that the issue may be addressed by a declaration by applicant to claim acquired distinctiveness under Section 2(f) (i.e., 15 U.S.C. §1052(f)).  A statement under Section 2(f) provides that “the mark has become distinctive of the goods and/or services through Applicant’s substantially exclusive and continuous use in commerce for at least five years immediately before the date of this statement.” If involving a highly descriptive mark, applicant may have to show more than five years of substantially exclusive and continuous use in commerce.  Applicant may also have to supplement his/her 2(f) claim with extrinsic evidence such as advertising materials, sales statements, advertising costs, marketing scope, branding efforts, affidavits etc.

If applicant’s mark has not acquired distinctiveness, then the Examiner should advise whether the mark qualifies for registration on the supplemental register.  The supplemental register is reserved for marks that lack distinctiveness or secondary meaning but which are also capable of acquiring distinctiveness, but have not yet done so.  Marks that qualify for the supplemental register are:

  1. Descriptive marks;
  2. Surnames;
  3. Geographic terms;
  4. Nondistinctive, nonfunctional trade dress

Although the Supplemental Register does not offer a registrant all of the protections of the principal register, it allows the registrant to use the ® symbol and will be a bar against the registration of later filed applications on the basis of a potential likelihood of confusion.   Once the mark has acquired distinctiveness, registrant may re-file the mark for registration on the principal register.

Note that it is not unusual for the Examiner to call the applicant or its attorney to discuss issues or deficiencies with an application, in lieu of or prior to issuing a written Office action.  While the Examiner’s email address is available for email communications, be careful about using that informal method of written communications.  Note that all of email communications with an Examiner will become part of the file and publicly available.  It is not uncommon for third parties to use such communications as statements against interest, admissions and for other evidentiary purposes in subsequent court litigation or inter partes proceedings before the Trademark Trial and Appeal Board (“TTAB”), e.g., opposition or cancellation actions.