Acquired distinctiveness refers to distinctiveness of a trademark that is not inherent, but that rather develops through use of the mark over time, such that consumers associate the mark with a secondary meaning — as an indication of source — rather than just the term’s primary, descriptive meaning.
The strength of a trademark initially depends upon where the mark falls on the following continuum from strongest to weakest:
Suggestive, Arbitrary, and Fanciful marks are considered inherently distinctive and can be federally registered without a showing of acquired distinctiveness or secondary meaning.
A mark found to be merely descriptive or generic cannot be registered on the Principal Register without a showing of acquired distinctiveness or secondary meaning.
How does a trademark applicant or owner show acquired distinctiveness or secondary meaning?
There are three basic types of evidence that may be used to establish acquired distinctiveness under §2(f):
- A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application (see 37 C.F.R. 2.41(b); TMEP §§1212.04 et seq.);
- A statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made (see 37 C.F.R. 2.41(b); TMEP §§1212.05 et seq.);
- Actual evidence of acquired distinctiveness (see 37 C.F.R. 2.41(a); TMEP §§1212.06 et seq.).
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