Trademark Issue 2(f) , or Acquired Distinctiveness, is one of the most common reasons a trademark application is refused on the Principle Register of the United States Patent and Trademark Office (USPTO). When the mark is not inherently distinctive, or lacks secondary meaning, a trademark application is refused under this category. An Acquired Distinctiveness claim may apply to the entire mark that is submitted (2(f)), or just part of a mark (§2(f) “in part”).
So what does it take to show Acquired Distinctiveness?
“The mark must be substantially exclusive and have continuous use in commerce. In other words, an applicant needs to prove that the primary significance of the configuration of the product in the minds of consumers is the source of the product, not the product.”
In order to do this, the applicant must prove direct and/or circumstantial evidence such as direct testimony, declaration, or survey of the state of mind of consumers, or circumstantial inference such as years of use, large amounts of sales and advertising, or similar evidence that clearly shows wide exposure of the mark to consumers.
In plain English, the mark has to not just be representative of that particular good or service, but must be representative of the operation as a whole. For example, if a coffee shop wants to trademark their mark, but consumers only see it as representative of coffee, not the shop in its entirety with all of the services, scones, sandwiches, and other goods it provides, the trademark would be refused based on Trademark Issue 2(f) , Acquired Distinctiveness. However, if that same coffee shop were to use its mark exclusively (no one else is using it) and continuously for 5 years and has evidence to prove the claim, Issue 2(f) would not stand. Additionally, if that same coffee shop gained enough exposure after several years to have consumers recognize its mark as representative of the whole operation, and this is proven through customer testimonials, a trademark may be approved.
Determining whether or not a trademark claim will be successful is not easy. The main thing to keep in mind is that the primary significance of the mark in the minds of the consumer must be where the goods or services come from. What is the source of the goods or services? Where are the goods and/or services coming from? When consumers can safely state the source in testimonials, and/or the mark has been exclusively used for at least 5 years, and proven to be only used by that operation, then the trademark application is more likely to be successful.
Trademarks that are only descriptive of goods and services and lack the acquired distinctiveness of being seen as a mark of the source of the good or service will only be registered on the Supplemental Register of the USPTO, not the Principal Register. Those marks that hold a Trademark Issue 2(f) or have no acquired distinctiveness, will be put on this Supplemental Register. In order to be moved to the Principal Register and gain the title of acquired Distinctiveness, marks must be seen as being representative of more than just the goods and services provided, but must also be associated with their particular source, their manufacturer or producer.