What is acquired distinctiveness?

To function as a trademark, a word, symbol, logo, name, or other mark must be capable of identifying the source of the product or service and distinguishing it from other sources.  Marks are either inherently distinctive, have not distinctiveness, or acquire distinctiveness.  Many marks are “inherently distinctive.”  An inherently distinctive mark is, as its name insinuates, unique by its very nature.  The more unique a mark is, the better it is at differentiating sources of products, and the more powerful it can be in the minds of consumers.  Inherently distinctive marks are eligible for immediate registration on the Principal Register.

Marks which lack distinctivenes cannot function as trademarks.  The Trademark Office will refuse to register such marks.  In many cases, an unregistrable trademark is any term or image that the Trademark Office believes describes the applied for goods or services.  In other cases, the mark may simply be a generic name for the product or service.  Descriptive marks, however, break down into those which are either “merely descriptive” or “geographically descriptive.”  These two terms describe a situation where a trademark is descriptive of the goods or services in the application or the location or origin of the goods or services.  For example, a merely descriptive mark would be PANCAKES for a restaurant that serves pancakes.  An example of geographically descriptive would be AMERICAN BURRITO for Mexican restaurant located in the US.  The Office, upon determining a mark is merely descriptive or geographically descriptive will refuse registration of that trademark.  There are ways to respond to such a rejection, however.

An applicant can respond by arguing that the mark is not descriptive.  These are not easy arguments to make.  Alternatively, in some cases, there may be an opportunity to argue that the mark has acquired distinctiveness and thus has become eligible for registration.

Acquired distinctiveness is when a company has been using a descriptive trademark for over 5 years and that trademark has gained recognition in the industry for the company’s goods or services.  Making an acquired distinctiveness argument is known as making a Section 2(f) claim because of the statute from which the basis arises.  Without the use of a Section 2(f) claim, the Trademark Office would not allow descriptive marks to register.  The Section 2(f) claim must establish that the mark has been used for five years with continuous and exclusive use that has allowed customers to relate certain goods or services to the company’s brand they are able to apply for the mark and rely on this provision to move the application towards registration.  It is important that the use be exclusive because if another company is using the mark in the same industry, then their exists a possibility that the distinctiveness quality of the mark is not so strong.  Often, the Trademark Office will accept a Section 2(f) claim, but sometimes, the Examiner requests to see additional proof of the efforts toward and extent to which the mark has been advertised and accepted as distinguishing the applicant’s goods or services.

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