Acquired Distinctiveness Under Section 2(f)

Section 2(f) allows trademarks that are not inherently distinctive to be registered if the trademark applicant can show they acquired distinctiveness.

As a general rule, trademarks that are not inherently distinctive cannot be registered trademarks at the United States Patent and Trademark Office. However, in instances where the trademark owner can show a trademark has acquired distinctiveness, i.e. the trademark has acquired a source identifying secondary meaning among relevant consumers.

Section 2 of the Lanham Act states that “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it…” and then goes on to list circumstances trademarks may not be registered. Most of the bars to trademark registration listed are a result of the trademarks not being inherently distinctive. In certain cases, section 2(f) allows trademarks that would otherwise be refused due to lack of distinctiveness to be registered on the principal trademark register.

 Section 2(f) of the Lanham Act

Under 2(f), trademark owners can provide the Examining Attorney evidence that their trademarks has acquired distinctiveness and should not be refused registration. Proof that trademark owners continuously and exclusively used their trademark for a period of five years will be viewed as prima facie evidence that the trademark has acquired distinctiveness and is therefore not subject to many of the section 2 refusals such as being primarily a surname or geographically descriptive.

Acceptable evidence of use and promotion can include:

  • advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
  • dollar figures for advertising devoted to such promotion;
  • dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
  • other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.

Often the best and most relevant evidence are showings of large sales numbers under the trademark, mentions in the media, and consumer surveys that show the trademark is recognized as a brand.

Trademark registration with 2(f) distinctiveness showing for CALIFORNIA, a geographically descriptive term and PIZZA KITCHEN, descriptive terms that are protected due to a 2(f) showing they have acquired distinctiveness.

Have any questions about section 2(f) and showing acquired distinctiveness to the USPTO? Leave a comment below or contact us directly today!

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