Acquired Distinctiveness in Trademark Law: How to Prove Secondary Meaning

This casebook examines how acquired distinctiveness is proven in trademark law.

A mark that refers directly to a product or service can still register with the USPTO as a product/service mark if customers have come to recognize the mark as a mark of a particular business. That’s what trademark law refers to as acquired distinctiveness or secondary meaning. There is a method to establish it in Section 2(f) of the Trademark Act.

The question isn’t only, “how many words have you used for the wording or how much did you pay for the promotion. It is whether there are now potential buyers who relate the proposed mark to the goods or services you are seeking to be identified. That may be made with a five-year-use statement, a qualifying prior registration, or other evidence. None may be accepted, and a very descriptive mark might need very strong evidence.

This guide provides an explanation of the three proof routes, why evidence is useful, why the third-party issue is important, and how Section 2(f) is similar to and/or different from the Supplemental Register. It is general U.S. trademark information and not trademark application advice.

What is Acquired Distinctiveness in Trademark Law?

Where the designation does not, in the absence of the relevant consumer, designate a source in relation to the goods or services, acquired distinctiveness is where relevant consumers have come to associate it with one commercial source. If repeated use, promotion, and public recognition of a trademark alter the meaning of the wording to buyers in that market, then such use is considered to have changed the meaning. It is not just the intention of the business owner that is evaluated by the USPTO, but also the actual mark, identified offerings, and evidence. USPTO TMEP §1212.

Is acquired distinctiveness the same as Secondary Meaning?

Yes. Generally, in this context, secondary meaning and acquired distinctiveness mean the same source-identifying recognition. The word secondary doesn’t imply that the business is not as significant. It also implies an extra connotation beyond the simple description; buyers have come to recognize that the name refers to a single source (even if they don’t know its name). The evidence should relate that recognition to the goods or services involved.

Distinctiveness: Acquired or Inherent

How many groups have it in common?	Is it distinct to each of them?	Is it something that is distinct to them after they acquired it?
When does it arise?	The mark serves to indicate a source, and without proof of the use experience where the consumers learn the association, it is not enough.	This source association emerges as a result of being used and recognised in the marketplace.
Common examples	Trading marks that are fanciful, arbitrary or suggestive in relation to the identified offerings.	Descriptive terms that have become a brand to the buyer.
Is a Section 2(f) showing needed for this issue?	In general, no.	Yes, if they can establish that the treatment is for Principal Register for acquired distinctiveness.
Main question:	Is the mark a natural source identifier?	Is it beginning to be perceived as a whole by the consumers?

The categories are based on the goods/services. An expression may be descriptive for one thing and not for another. See Merely Descriptive Trademark for the first refusal and the distinction between descriptive and suggestive language.

What does Section 2(f) mean?

Section 2(f) of the Trademark Act provides for the acquisition of acquired distinctiveness, or the ability of an applicant to demonstrate that a trademark is distinctive of the applicant’s goods/services in commerce. It is not a category of trademark, nor is it a remedy for all refusals, but rather is a path to registration of a mark that would otherwise be opposed on grounds of distinctiveness. A valid claim must be based on the matter and offerings that are being disputed. A service that is being consulted does not necessarily mean that an unrelated product is recognized. TMEP §1212.

Three ways to prove Acquired Distinctiveness?

The USPTO identifies three basic proof routes. It is sometimes possible for an applicant to use a combination, and it is sometimes necessary for the examining attorney to obtain more proof than one of the two. TMEP §1212.

1. Eligible Prior Principal Register Registrations

It may be accepted as preliminary evidence in an appropriate case (e.g., if the Principal Register mark is still active) that the party is the owner of an existing Principal Register registration for the same mark for the same goods or services or a legal equivalent thereof. The USPTO looks at the marks and the connection between the offerings. Even though you own a cancelled registration, a Supplemental Register registration, or an unrelated prior registration, they will not be this route. It is possible that with a qualifying registration, a highly descriptive mark could require additional proof. TMEP §1212.04.

Five years of substantially exclusive and continuous use.

An Applicant may file a representation that the mark is now well-known in the lines of commerce in which the Applicant has substantially exclusively and continuously used the mark for the five years immediately prior to filing the Section 2(f) statement. It’s not just a statement that the company has been operational for five years. The use shall relate to the mark and goods/services, and the USPTO can ask for additional evidence. TMEP §1212.05.

3. Other Evidence of Consumer Recognition

An applicant can submit real evidence that it is believed that the proposed mark is associated with one source by buyers. This may involve consumer surveys, declarations, type and scope of advertising, sales with context, unsolicited media coverage and evidence of exclusive use in the marketplace. Evidence is assessed in its entirety. When a bunch of large numbers never demonstrates to the consumer that they recognise the claimed mark, it is less useful. TMEP §1212.06.

What is the evidence of acquired distinctiveness after 5 years of use?

Not necessarily, but sometimes. The statute allows the USPTO to take the verified five-year statement as “initial evidence” if appropriate. It is not required as an acceptance in all instances. The more detailed the information describing the identified goods or services, the more significant the showing might require. When other companies use the same terms on their websites, this can weaken the claim as well. TMEP §1212.05.

When considering five years, review the dates, actual use of the proposed mark, the offerings advertised, and comparable third-party use. If the examiner tells the student why the statement is not sufficient, more evidence should be given for that particular issue. The starting point of Section 2(f) is still consumer recognition, and five years is a qualifying use.

What is “Substantially Exclusive and Continuous Use”?

Avoid the term substantially exclusive, which does not imply that the term has not been used by anyone else in the past at all. Use of others, which is inconsequential or infringes the claim, does not defeat the claim. If other companies use the text significantly in a marketplace, including for description, it will detract from the strength of the association of the text with a single business. As a mark, the wording is used throughout the period, as opposed to appearing as regular descriptive copy. Continuous concerns are used throughout the period. TMEP §§1212.05(b)–(c).

Check out the real marketplace history. A company that’s been selling products for eight years could have been only describing their products with the proposed phrase for a portion of this time. Use of the Trademark in Commerce is discussed separately in Trademark Use in Commerce.

What evidence can be used to demonstrate acquired distinctiveness?

The strongest file provides information to demonstrate the buyer perception and defines the mark and offerings consistently. Think of these categories and not a checklist of course.

No set number of declarations, advertising budget, sales threshold, etc. The USPTO considers the entire record, nature of the mark, and the match between the proof and the claim. TMEP §1212.06.

The fact that spending on advertising is not enough to make a difference.

An invoice for a huge campaign does not necessarily provide evidence of what was learned by the buyers. Provide representative ads and describe the location, date, and manner in which the mark appeared. Was it displayed consistently as a brand? Was the copy intended to lead consumers to the promised phrase or element? lastly Was another house mark really performing the source-identifying task?

Those spending figures can take on meaning when given in recognition evidence. The USPTO’s interest is whether promotion was effective as a means of making buyers aware of the proposed mark and making them think of one source. TMEP §1212.06(b).

Do Sales Figures Prove Secondary Meaning?

Sales can aid but do not constitute proof. The revenue and number of customers may indicate that individuals interacted with the offering. They are not intended to indicate that customers were aware of the specific claimed mark and interpreted it as being a brand. Discuss the period of time, the location, the products involved, and the use of the mark at that time. Use figures to compare with the market if there is sufficient context and with evidence of actual source recognition where possible.

Should Consumer Surveys be Mandated?

Not always, but not always. Sometimes, where a mark is very descriptive, and there is no other evidence of consumer perception, a well-designed survey can allow for direct evidence. However, surveys need to reach the right audience and ask the right questions; otherwise, the results may be of limited usefulness. A survey is not a necessity or a sure cure. It is important for the applicant to consider the value of its application in view of the record that has already been established. TMEP §1212.06(d).

Acquired Distinctiveness Examples

These examples are only illustrative and do not predict any USPTO action.

The following is an example of strong recognition and long use. The following is an example of long use and strong recognition.

A service provider has registered a descriptive word as its service mark for a number of years. Any relevant customers recognize that expression with that provider in reliable certifications as well as a reasonable poll. Those materials address more to secondary meaning than longevity.

To get the third-party use example, click the link below. To view the third-party use example, click here: Example 2 — Five Years and Significant Third-Party Use

An applicant claims to have used the service for 5 years, while there are numerous examples of competitors using similar language to describe the same service. The examining attorney might ask if the use was substantially exclusive or if the buyers perceive one source.

What evidence does a consumer offer to help an advertiser? What information can a consumer provide to assist an advertiser?

A vendor makes dated campaigns regularly emphasizing the mark, background sales records, and solid proof that consumers are familiar with the designation. The materials tie promotion to perception of the buyer more clearly than a total budget alone.

Consider the following example: Let’s now look at a case where the trademark has not been used for years and years.

Many years ago, a product page was described with the proposed phrase, and another name is used as the brand. Exposure alone, over the years, may not prove sufficient to establish that buyers see the phrase as a mark.

Is a Highly Descriptive Trademark Distinctive?

Potentially. The challenge is evidence: If the words describe a prominent characteristic, it could be more difficult for customers to interpret them as a source. That may not be a sufficient number of years in a five-year statement or substantial sales. These considerations may become particularly significant in the case of more direct recognition evidence, the ways in which the trademark is used or whether the third party is using it. While the mark is descriptive, it does not necessarily have to be generic – the difference is discussed in Merely Descriptive Trademark. TMEP §1212.05(a).

Is it possible for a generic term to have specificity?

Not as a blanket term for the specific products or services. The category name does not become a registrable mark because of advertising or prolonged use under section 2(f). A mark used for a generic purpose may raise a second question of the composite and disclaimer, but the generic term does not “secondary mean. TMEP §§1212.02(i), 1209.01(c).

May a Trademark Claim Section 2(f) be used for only a portion of a Trademark?

Yes, where appropriate. A “in part” claim under Section 2(f) is a claim to a portion of a composite claim. The evidence is required to demonstrate recognition of that part, not the entire logo or a “house mark” that identifies the company.

Is there such a thing as acquired distinctiveness for only some goods and services?

Potentially. For a claim to apply to a product or service, the goods or service must be supported. Recognition for each item of a multi-class application does not necessarily occur when evidence of one is present. Sometimes, distinctiveness transfers from one offering to another may be used to support an argument, but there must be case-specific support for the transfer of distinctiveness. Carefully consider each corresponding offering when making a general statement about identification and actual history of use. TMEP §§1212.05, 1212.09.

Does an Applicant’s Intent to Use Claim Acquire Distinctiveness?

Not typically on a new mark, one that is unused. An acceptable allegation of use normally will be followed by an application for relief under Section 2(f), in a Section 1(b) case. There is a qualified exception where the applicant has already acquired distinctiveness over the same mark used on goods/services that are sufficiently related, and provides evidence that the source-identifying significance will be transferred to the new offering upon its beginning use. This is more than just a fact that the brand is popular. TMEP §1212.09.

The filing pathway for an Intent-to-Use Trademark Application is followed; the later use requirements are not waived under Section 2(f).

Section 2(f) vs. Supplemental Register

Question	Claim (2(f))	Supplemental Register
Destination.	If the Section 2(f) showing requirements and other requirements are accepted, it is to be sent to the Principal Register under	An independent register of eligible matter with ability to distinguish offerings.
Consumer recognition	Requires an adequate showing of acquired distinctiveness.	Does not need to present as much evidence for registration.
Applicable applicant	One who has convincing evidence in relation to the specific mark and products.	Potential route for an eligible descriptive mark for lack of present proof of acquired distinctiveness.
Result	Principal Register registration includes any relevant statutory presumptions.	Registration does have benefits, but not the same Principal Register presumptions.
Generic matter	Generic wording itself cannot be rescued by Section 2(f).	The selection of this register does not suffice to make a generic matter registrable.

There are filing basis and use restrictions on the Supplemental Register. Typically, a Section 1(b) application cannot, without a new qualifying allegation of use, be simply transferred there, and a Section 66(a) application cannot be converted into a Section 1(b) application. Consider the rationale for the application and other rejections before selecting a route. TMEP Chapters 800 and 1200.

When is Section 2(f) a better option than Supplemental Register?

If there is a basis for a serious claim that users already understand the mark to refer to your business, think of Section 2(f). It can also be important to have a prior Principal Register registration.

If a mark and basis for registration exist, a newer descriptive brand that does not have adequate evidence of recognition may have a supplemental registration option. Either of these paths does not address an unrelated conflict or all of the other USPTO requirements. Make an amendment after analyzing the real evidence and consequences.

If your Section 2(f) Evidence is not accepted, what will happen?

Read the examiner’s reasoning and exhibits. Was there no indication of use as a mark, substantial exclusivity, recognition of the specific wording, or relationship between the evidence and the listed goods? A response can provide some additional relevant evidence and respond to the critique. An eligible Supplemental Register amendment or alternative argument that the mark is inherently distinctive may be considered, depending on the case.

An appeal to the TTAB and/or a request for reconsideration may be appropriate if a refusal is final. A reconsideration request will not automatically extend an appeal deadline. For procedure, refer to Trademark Office Action Response; for the deadline, please refer to the Office Action letter itself.

Can You Argue Both Inherent Distinctiveness and Section 2(f)?

Yes, in a well-constructed alternative claim. The applicant may claim that the mark is inherently distinctive and, on the other hand, that the mark has become distinctive. To the extent that it is not an unqualified Section 2(f) claim, the TMEP recognizes that approach as different. Explain where certain positions and supporting evidence are located; don’t take it for granted that a checkbox contains all supporting evidence and positions. TMEP §1212.02(c).

Common Section 2(f) Mistakes

• The USPTO might ask for additional evidence, particularly in the case of very descriptive matter, for five years considered as automatic proof.
• Trademark use: Demonstrate how ordinary descriptive copies of the proposed matter were used by buyers as an identifier of a trademark.
• Failure to investigate significant third-party use: Avoid claiming significant exclusivity when there is comparable use on the marketplace.
• Only advertising totals: Only submit the advertising totals with the necessary evidence and explanation of what the consumers learned.
• Don’t give sales figures without context; relate sales to the mark, period, relevant goods, and market.
• Relying on the wrong prior registration: Ensure that it is registered on the Principal Register, and the same or legally equivalent mark for products/services that are similar.
• Claiming all of the offers at once: Match evidence to each relevant good or service.
• Generic Matter cannot be cured by Section 2(f): A category name cannot be a trademark for that category.

Is there a Section 2(f) claim for you?

Yes, if you qualify to represent yourself and/or your business before the USPTO. The hard part is frequently determining the evidence and articulating the assertion precisely. Comparisons made before registration, third-party use, highly descriptive claims, partial claims, and a final refusal may require more complex analysis. Foreign-domiciled applicants should employ an attorney that is licensed in the United States for USPTO trademark issues. Never sign a verified 5-year statement that isn’t accurate and is not signed by an authorized person. USPTO representation guidance.

When to seek professional help?

In cases where the mark has value, the examiner denies the 5-year claim, competitors are using the same words, a consumer survey is under consideration, the claim is only for part of a mark, or a final refusal is nearing its expiration, consider hiring qualified U.S. trademark counsel. The job is to evaluate the evidence and the options for doing the work, rather than guaranteeing any outcome.

Need some assistance in proving Acquired Distinctiveness?

EagleMarkUSA may aid in organizing your application record and talking about its Office Action help. Case-specific legal analysis or representation should be provided by a U.S.-licensed trademark attorney as needed. Acceptance cannot be guaranteed with the USPTO.

The most common questions regarding acquired distinctiveness.

What does acquired distinctiveness in trademark law mean?

Consumer recognition through market use – consumers are aware of a matter that is not of its own nature particularly distinguishing a single source of the goods or services to which it refers. The USPTO considers such evidence of recognition under Section 2(f).

Does acquired distinctiveness equal secondary meaning?

Generally, yes. Both terms mean a designation that receives a source-identifying connotation, or meaning, beyond its basic dictionary definition. The relevant question is what “relevant consumers” understand, not whether or not the owner calls the wording a brand.

What is section 2 (f)?

Section 2(f) of the Trademark Act can allow for the registration of a mark on the Principal Register when the mark has become distinctive of the applicant’s goods/services in commerce. Does NOT cancel out all other possible refusals.

What are some ways to establish acquired distinctiveness?

The three main ways to show consumer recognition are through a prior Principal Register registration that is an active trademark, a verified claim of five years’ substantially exclusive and continuous trademark use, or other evidence of consumer recognition. The USPTO may request more evidence based on the mark and record.

Does five years’ use suffice?

It might be enough in a suitable case, but not in every case. The statement is about using the mark in commerce over the last 5 years leading up to the claim. If the material is very descriptive or if it is important that other parties use the material, more evidence will be needed.

What does “substantial exclusive use” mean?

Exclusivity is not a strict requirement. Using similar material by others can diminish the argument that readers recognize the language as a reference to a single source, but using inconsequential material or infringing on third-party use does not always undermine a claim.

What is the evidence that demonstrates secondary meaning?

Consumer surveys, consumers’ or dealers’ declarations, identification of the claimed mark in advertising, sales and market data, evidence of exclusivity, and unsolicited media coverage are examples of useful evidence depending on the facts. The point is that these offerings are recognized for this mark.

Are the sales evidence of the distinctiveness that has been acquired?

Not by themselves. Sales are indicators of market penetration and do not always indicate what the consumer thinks is the source identifier. Describe the way the claimed mark came into use during those sales and, as needed, provide recognition evidence.

Would the money spent on advertising constitute secondary meaning?

An advertising budget can help back up a claim, but it does not demonstrate that the proposed mark is associated with one business because of the advertising. The content and consistency, reach, and impact of the promotion are important.

Should I conduct a survey with consumers?

Not always. A thorough survey can offer solid first-hand data, particularly in the case of a challenging claim. Bad surveys are not worth much, and so are the design of the survey and the consumer group that it addresses.

Are descriptive trademarks capable of becoming distinctive?

Potentially. Use and consumer recognition can be sources of identification of a descriptive word. The longer it is, the more proof it must have. There are other registration criteria that are still applicable.

Does a generic mark become distinctive?

No, any use and/or extensive advertising of a name does not make it a trademark for the goods or services it refers to. If a composite contains generic wording, then it needs to be treated separately.

Are there circumstances where the Section 2(f) applies to a part of a mark?

Yes, in appropriate circumstances. The applicant is required to designate the relevant portion and demonstrate that consumers understand that the designated portion is a source indicator. A larger logo or different house mark may not be recognized as establishing the claim.

Is it possible to apply Section 2(f) to only some goods or services?

Potentially. The evidence shall support the distinctiveness of the offerings of the claim. The recognition in one market does not necessarily extend to other goods or services that are not related.

What are the differences between Section 2(f) and the Supplemental Register?

An accepted Section 2(f) claim is sufficient for a registration based on ‘acquired distinctiveness’. An eligible mark that is capable of distinguishing goods or services may be available on the Supplemental Register if the same mark does not have the same acquired distinctiveness. There are variations in the legal effects and eligibility criteria of the registers.

Conclusion

Acquired distinctiveness is related to knowledge gained by the buyer and not necessarily the length of time the business is in existence. Section 2(f) also provides that an applicant may use a prior registration that qualifies for its continuation as a basis for applying for recognition, evidence of five years use, a verified five-year use statement, or an appropriate combination of these. It can take 5 years, but descriptive language and common usage by others can make it more difficult. Sales and advertising is helpful when they help illuminate the way the consumers actually understand the mark.

Before making a decision, consider the specific mark, the goods/services included in the application, and the examiner’s concerns regarding a Section 2(f) claim or an eligible Supplemental Register route.

Need assistance with your Section 2(f) Claim?

Discuss organization of prior registrations, use history, recognition evidence, and Office Action materials with EagleMarkUSA. A professional U.S. trademark attorney will be able to evaluate the legal arguments and avenues that are applicable to your case. There is no such thing as a guarantee of USPTO acceptance for any service.