Introduction

Business enterprises often prefer to adopt trademarks that describe the company’s goods or services because they require less of an investment to develop the brand and educate the target consumer. This is in contrast to trademark counsel’s advice to select marks that have no meaning or whose meaning has no relationship to the goods or services. The reason for this advice is that the ability of a trademark to fulfill its function of identifying the source of goods or services is measured along a spectrum or continuum of distinctiveness, with marks that describe the goods or services or some characteristic thereof considered weak in their ability to serve as exclusive source-identifiers. On the other hand, marks that are intrinsically capable of this function – marks that are “inherently distinctive” – are considered strong. Terms that both lack inherent distinctiveness and are considered incapable of ever becoming distinctive cannot serve as trademarks. If the business insists on adopting a mark that merely describes a characteristic of the goods or services, its ability to obtain a U.S. registration for the mark (as well as registrations in other countries) may depend on the ability to demonstrate that the mark has obtained secondary meaning in the minds of consumers, i.e., that it has “acquired distinctiveness.”

Section 2(f) of the Lanham Act provides that “nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.”1 A 2(f) claim may be made at the time of filing or, more typically, during prosecution of the application. The simplest way to make such a claim is by submitting a declaration stating that the applicant or its licensee(s) has used the mark continuously and exclusively for a period of five or more years. However, this writer has witnessed increased scrutiny by examining attorneys in the PTO, who often require additional evidence in the form of, inter alia, advertising expenditures, sales revenues, examples of advertising and marketing materials, affidavits from relevant consumers attesting to their understanding of the term(s) as a source identifier, and consumer surveys.

The need to show acquired distinctiveness in the United States is not limited to marks deemed merely descriptive of the goods or services. Other marks that may be considered to lack inherent distinctiveness may be registered if acquired distinctiveness is demonstrated. Examples include marks that are refused as “primarily merely a surname,” “merely ornamental,” “deceptively misdescriptive,” or “primarily geographically descriptive”. All product packaging and some product design trade dress applications are considered to lack inherent distinctiveness and to require a successful claim of acquired distinctiveness to be registered. Color, sound, and other non-traditional marks also usually require a showing of acquired distinctiveness. In addition, acquired distinctiveness can be asserted in part to overcome a requirement to disclaim an assertedly non-distinctive element of a mark. On the other hand, marks that are deemed functional, deceptive, purely ornamental, generic, or otherwise fail to function as a trademark cannot be registered even with a claim of acquired distinctiveness because they are considered incapable of obtaining secondary meaning.

Apart from business pressures to adopt descriptive marks, the popularity of registering trade dress and non-traditional trademarks in the United States appears to be growing, and this may be partly responsible for the recent reemergence of interest in the concept of secondary meaning.

This article will first address considerations leading up to the filing of a U.S. trademark application for a mark or portion thereof that may lack inherent distinctiveness. It then discusses the ways in which acquired distinctiveness may be shown during prosecution.

Pre-Filing Considerations

When a proposed mark may lack sufficient distinctiveness to be registered in the United States, several considerations should be raised before filing the application. The benefits of considering these issues early are that the trademark counsel can manage the applicant’s expectations about the chances of success and costs, while the applicant can begin to build its case in support of a claim of acquired distinctiveness.

One consideration is where along the spectrum of distinctiveness the proposed mark falls. If the mark may be generic or highly descriptive, the applicant should be prepared for the possibility of substantial additional costs associated with efforts to obtain a registration as well as the heightened risk that the application will fail. If the mark may be descriptive of a characteristic of the goods or services, but there is a reasonable argument that target consumers will use some imagination, thought, or perception to recognize what the mark conveys (i.e., that the mark is suggestive rather than merely descriptive), there may still be additional costs, but the chances of success will be improved. Nonetheless, an understanding of the applicant’s budgetary constraints and the importance of the proposed mark to the business can help to determine how much effort to put into trying to register a potentially descriptive mark, depending on where along the spectrum of distinctiveness it is likely to fall.

The form of the mark also should be considered. While refusal of registration may be avoided by the inclusion of an additional distinctive element, such as a previously registered term or a graphic logo, if the term will be used with that additional element, the descriptive component will likely be the subject of a disclaimer requirement, and a claim of acquired distinctiveness in part still would be needed to overcome that requirement. If the applicant is not concerned about claiming exclusive rights to the potentially descriptive term, compliance with the disclaimer requirement may be a feasible option. Moreover, a registration even with the descriptive term disclaimed could be helpful in blocking subsequent third-party applications comprising the term or deterring subsequent third-party uses, which may ultimately help maintain exclusivity. However, as discussed further below, attorneys should advise clients on the possible effect of the disclaimer on future claims of exclusive rights in the descriptive term.

Another consideration is whether and for how long the applicant’s mark has already been used in U.S. commerce. If, at the time of filing, the mark has been used for, say, a decade or more, and this is reflected in the claim of first use in the application, the examining attorney may be predisposed to consider that the mark has obtained secondary meaning and to accept an acquired distinctiveness claim based solely on a declaration of continuous and exclusive use over that period. Use for only five years may be enough to support registration under 2(f), but the examining attorney may require more evidence than just a declaration. Where there has been use for a shorter period, one can consider the approximate timing of the various steps in examination to calculate whether five years of continuous and exclusive use may be reached at some point during the prosecution of the application. In most cases where there has been use, and the mark is capable of acquiring distinctiveness, even if a 2(f) claim is not permissible or accepted, the applicant has the option of seeking registration on the Supplemental Register, which is reserved for marks that are capable of becoming distinctive through use.

A more limited set of benefits arises from registration on the Supplemental Register, but it still can be used to prevent third parties from registering and using similar marks for similar goods or services. If there is no use at the time of filing, the Supplemental Register may only be available under limited circumstances (discussed below), and a claim of acquired distinctiveness also may not be feasible without a very significant investment in advertising and other evidence collected after the use commences. While registration on the Supplemental Register is possible in the case of applications based on foreign registrations, this would not be an option in the case of an extension to the United States of an International Registration obtained under the Madrid Protocol. By helping the client to understand how the duration of its use at the time of filing will impact the possibility of registration, a trademark attorney can better manage the applicant’s expectations about the chances of success and costs before they make the investment.

Another aspect to consider early is how the mark is being used at the time of filing. Of course, the applicant needs to be aware of third-party use as a trademark to identify the goods or services of another and how such use could serve as a basis for an objection to the proposed application. This risk can be better assessed through a so-called “comprehensive” clearance search for similar terms. A comprehensive search discloses third-party efforts to register a similar mark federally or within one or more states as well as uses on the Internet and in the media that may rise to the level of creating common-law trademark rights. The clearance search is also important because of the need for caution that another party may have obtained secondary meaning that would allow it to enforce its rights against the proposed application as well as the applicant’s use. It is often advisable to consider conducting a private investigation of the third-party’s use.Applicants wishing to use a term(s) non-exclusively and in a descriptive rather than a source-identifying manner should be cautioned not to apply to register the term or to use the TM or SM symbols in relation thereto so that they can more easily claim fair use. On the other hand, ongoing efforts to monitor uses by third parties that are subsequent to those of the applicant or its licensees can allow for prompt enforcement efforts as well.

Apart from uses as a source-identifier, descriptive uses by the applicant, its licensees, or third parties also can impact the applicant’s ability to register the mark and to claim acquired distinctiveness, if necessary. To what seems to be an increasing degree, examining attorneys in the PTO attempt to identify uses of an applied-for term on the Internet and cite such uses when claiming that a mark or portion thereof is not inherently distinctive. By using its own mark in a descriptive manner, the applicant can make it difficult to persuade the examining attorney that the term functions to distinguish the applicant’s goods or services. Similarly, descriptive uses by third parties can suggest that the applicant’s claim of exclusivity is unwarranted and that there is a need to keep the term available for the commercial speech of others. “Research showing that third parties in applicant’s field or closely related fields use the same or substantially the same wording as the mark, or very similar wording as the mark, tends to indicate the mark is at least highly descriptive,”2 and in those cases, a greater amount of evidence of acquired distinctiveness typically is, accordingly, required.

How can the mark have achieved secondary meaning in the minds of consumers that identifies the applicant as the source of goods or services if those consumers see the term(s) in other descriptive contexts? How will the consumer know the term is actually a trademark? Applicants’ counsel should advise on proper use and retention of evidence of such use to eventually support the acquired distinctiveness claim if needed. Proper use requires that the term(s) be used as an adjective modifying a descriptive noun; that it be prominent and separate from other text; and that it include a TM or SM symbol immediately after the trademark and perhaps also an attribution statement to educate consumers that the applicant is claiming trademark rights in the term.

The online U.S. trademark application forms encourage applicants to provide their website addresses. As such web addresses are not required, applicants represented by counsel frequently omit this information so as not to provide information that could potentially be used by the trademark office or third parties as the basis for a refusal or objection. This risk arises where an applicant includes its web addresses in the application, and uses the mark in a descriptive sense on the site. On the other hand, proper use as a source-identifier on the website, particularly if the web address is included in the trademark application, may help persuade an examining attorney that the mark has distinctiveness, whether inherent or acquired.

There is also the possibility of anticipating that the examining attorney will consider the mark not to be inherently distinctive and of avoiding refusal by making the claim of acquired distinctiveness in the application at the time of filing. This strategy may be reserved for highly descriptive or otherwise questionably distinctive marks in order to try to discourage the examining attorney from refusing the mark as generic or otherwise incapable of obtaining secondary meaning.

The other reason for considering the possible need to claim acquired distinctiveness prior to filing is to provide time for the applicant to begin collecting evidence to support a future claim. As some forms of evidence, which are discussed below, may take several steps to obtain over time, initiating efforts to collect it with substantially more than the typical six-month period for responding to an Office Action can help contain costs and facilitate a successful 2(f) claim. In addition, by addressing the potential need for an acquired distinctiveness claim prior to filing, the applicant can begin tracking information that may support such a claim proactively.

One form of evidence that is considered in a 2(f) claim is the extent of advertising and marketing efforts to educate consumers about the brand and the amount of resulting sales. Applicants for potentially descriptive marks should be encouraged to keep track of their annual advertising and sales figures relating to the mark. Prior to filing, the applicant can begin to collect or create various examples of advertisements showing use of the mark. The applicant can proactively collect media clippings in the form of unsolicited news articles, blog posts, and social media references that identify the term as a source-identifying mark. The applicant also can collect evidence of the first use of the mark.

Another proactive step that the applicant may wish to consider before or when filing an application for a potentially descriptive mark is to begin to identify customers to approach to sign affidavits supporting the applicant’s position that the mark has acquired secondary meaning. Obtaining such affidavits typically requires multiple steps, including identifying the customers, educating them about what must be included in the affidavit and the public nature of the document once filed, and ultimately obtaining the signed documents. These can be time-consuming, so it is advisable to initiate efforts to obtain this sort of evidence early.

Moreover, advice concerning a potentially descriptive term should not be given in isolation. Consideration should be given to whether the applicant owns prior registrations that comprise the identical term and how that may affect the proposed application. If the applicant previously registered a mark that contains the identical term and disclaimed exclusive rights to the term, there is a greater risk the PTO will raise the issue of descriptiveness in the new application even though examining attorneys are instructed not to be influenced by disclaimed matter in a prior registration. If the applicant owns an earlier registration on the Supplemental Register, the examining attorney may take a consistent approach with the examination of the prior registration and issue a descriptiveness refusal if a 2(f) claim is not included with the application. If the applicant owns a prior registration for the identical mark covering different, but arguably related goods and services, there is a possibility that even if the mark is not yet in use on the new goods and services, a claim of acquired distinctiveness will be accepted. To show acquired distinctiveness in an intent-to-use application when the applicant owns a prior registration for the same mark, the applicant must show (a) acquired distinctiveness in relation to the previously registered goods and (b) “the extent to which the goods or services in the intent-to-use application are related to the goods or services in connection with which the mark is distinctive and that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods or services when use in commerce occurs.”3

Claiming Acquired Distinctiveness During Prosecution

Where a mark is considered by the PTO to lack inherent distinctiveness, the applicant has the burden of proving that it has acquired distinctiveness and therefore is registrable.4 The applicant’s claim of acquired distinctiveness, if not pled in the alternative to arguments that the mark is inherently distinctive, serves as a concession that the mark is not inherently distinctive.5 In contrast, registration on the Supplemental Register does not constitute an admission of a lack of acquired distinctiveness.6

A 2(f) claim may be made based on: (1) a declaration of continuous and exclusive use over a period of five years or more, (2) prior registrations for the same mark or a portion of the mark, or (3) other evidence. Whether acquired distinctiveness has been established is a question of fact.7 However, “proof of substantially exclusive and continuous use as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness.8 The five-year period can be achieved during the pendency of the application and does not depend on the filing date. If the allegedly descriptive portion of the mark was used for substantially longer than five years but is only a portion of the applied-for mark, which has been used for a shorter period, the applicant may need to reference the longstanding, continuous and exclusive use of the descriptive element, even if it cannot claim such use for the mark as a whole. If the PTO accepts a 2(f) claim based, for example, only on a declaration of continuous and exclusive use for five or more years, the resulting registration on the principal register is entitled to a legal presumption of validity that includes the validity of the acquired distinctiveness claim.9 A published application for registration on the Principal Register with a 2(f) claim is not entitled to the presumption of validity in the acquired distinctiveness of the mark in an opposition proceeding because the registration has not yet issued.10 A registration on the Supplemental Register is not entitled to a legal presumption of validity.

The sufficiency of evidence depends on the facts of each case, including the nature of the mark.11 Typically, more evidence is required where a mark is considered so highly descriptive that purchasers would be less likely to believe that it indicates source in any one party.12 For example, the mark CLOUDTV was considered so highly descriptive that evidence in the form of three separate declarations by a corporate officer attesting to the market success of the product and accompanied by photographs of trade show exhibits and press releases was not sufficient to show acquired distinctiveness in relation to various software goods and services and broadcasting and entertainment-related services.13 Similarly, for product design trade dress, evidence of five years’ use considered alone generally is not sufficient to show acquired distinctiveness.14 However, the examining attorney generally will not provide guidance as to the amount or nature of evidence that he/she considers sufficient, though he/she can sometimes make suggestions regarding an appropriate course of action.15 Examining attorneys often indicate whether they consider a mark to be highly descriptive or potentially generic and whether they will consider a declaration of five years use to be sufficient or if more evidence will be needed. This guidance can aid the applicant and its attorney in determining whether a 2(f) claim based on the evidence available is worth pursuing.

Other evidence that may be submitted with a 2(f) claim may consist of verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.16 Courts have provided further guidance as to the relevant factors in making a determination that a mark has acquired distinctiveness: “copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, consumer studies (linking the name to a source).”17 No single factor, however, is determinative.18 In a recent precedential decision of the Trademark Trial and Appeal Board, the product design of the base assembly of an electric toothbrush head was held not to have acquired distinctiveness in spite of evidence of sales of 72 million units, approximately $100,000,000 invoiced for seven consecutive years, a prior cancelled registration for a similar mark, a period of over ten years of continuous use, and alleged third-party infringements.19 The sales figures were considered substantial, but they were determined insufficient because they were unaccompanied by evidence of advertising expenditures identifying types of media through which the goods were advertised and typical advertisements, which Trademark Rule 2.41(a) indicates should be provided, in order to determine the nexus, if any, between the sales success and advertising efforts and the product design. “The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source.”20

Applicants are often concerned that evidence submitted becomes part of the public record, and is readily available on the PTO website. With regard to confidential advertising figures, the PTO suggests that applicants may instead indicate the types of media through which the goods and services have been advertised (e.g., national television) and how frequently the advertisements have appeared.21

Sample advertisements can be particularly effective when they include so-called “look for” advertising that expressly instructs consumers to view the mark as a source-identifier. “Advertisements showing ‘look-for’ types of promotional efforts from an applicant may be particularly probative on the issue of whether a product design functions as a source identifier. ‘Look for’ advertising…directs the potential consumer in no uncertain terms to look for a certain feature to know that it is from that source. It does not refer to advertising that simply includes a picture of the product or touts a feature in a non-source-identifying manner.”22

A collection of press clippings and other independent media coverage also can be helpful but should not be client-generated materials such as press releases. Conclusory statements in declarations and accompanying press releases were not sufficient to overturn on appeal a refusal by the Examining Attorney based on the highly descriptive nature of the mark CLOUDTV for software and television-related goods and services.23

Affidavits and letters from longstanding customers are also useful in proving acquired distinctiveness. A few of these documents can go a long way toward illustrating that the consuming public recognizes the mark as identifying the applicant’s goods or services. The challenge involved inobtaining them is this may be viewed as an imposition on the customer. The applicant then needs to educate the identified consumers as to what must be said, to get them on board with providing the requested letter, and to follow-up to ensure timely receipt of the documents.

Properly designed consumer surveys performed by a competent marketing research expert, while often too expensive to employ for ex parte prosecution, can be highly probative, as they illustrate somewhat scientifically how the mark is perceived. However, if the survey is poorly designed, the PTO may not afford it sufficient weight, and third parties may be able to later challenge the registration. The survey should avoid leading questions, and should address relevant consumers. Employing a control group for comparison of results can be helpful.

Conclusion

Acquired distinctiveness claims are becoming more important as businesses continue to adopt relatively descriptive trademarks, while a growing number pursue registration of non-traditional trademarks. At the same time, the PTO appears to scrutinize such claims more carefully than in the past, such that five or more years of continuous and exclusive use often is insufficient. This has led to increasing costs for applicants seeking to register and retain descriptive marks and other marks that lack inherent distinctiveness.

Originally published in Vol. 24, No. 3 of Bright Ideas (Winter 2015), a publication of the Intellectual Property Law Section of the New York State Bar Association.