Acquired Distinctiveness Requires Both Continuous and Exclusive Use of a Trademark
When you file a trademark application for a mark that is descriptive of the goods and services – or a quality or characteristic of the goods and services – the Trademark Office will refuse to register it initially. You can still generally achieve registration by amending the application to the Supplemental Register. Or, if you can show long, continuous, and exclusive use, you can keep the application on the Principal Register by claiming acquired distinctiveness under Section 2(f) of the Lanham Act. Basically, you are asserting that the public has come to recognize your mark as indicative of the source of your goods or services because of the efforts you’ve made over several years to associate your brand with a certain quality.
Until recently, it was common that five years of continuous and exclusive would generally satisfy a Trademark Examiner such that you could successfully make a 2(f) claim. However, a discussion I had recently with an Examiner revealed that the Trademark Office has sent down orders to the examining corps that longer use is now going to be necessary, absent other factors such as massive branding or marketing expenditures relative to revenues.
This indicates that showing an adequate length of use is going to be more difficult moving forward. However, a recent ruling within the Trademark Office has raised a new issue. An application was just defeated in an opposition proceeding because it lacked the requisite exclusivity that is part of the 2(f) test. There, an opposer asserted that, while the trademark applicant had used the mark for a long time, it had not done so exclusively, presenting evidence that the opposer and several third parties had used the identical trademark. This was enough to weigh against the application. While absolute exclusivity – likely an impossible standard – is not required, widespread use is inconsistent with a 2(f) claim.