When Has a Trademark Acquired Distinctiveness?

acquired distinctiveness
Image by Gerd Altmann from Pixabay

Acquired distinctiveness is a basis upon which a trademark that otherwise could not be registered otherwise may be registered.

That is, when a proposed trademark is denied registration because the United States Patent and Trademark Office (USPTO) has deemed it to be merely descriptive, it may still be registered under the so-called Doctrine of Acquired Distinctiveness.

What Is Acquired Distinctiveness, or Secondary Meaning?  

Acquired distinctiveness, or “secondary meaning,” is an exception to the refusal of a trademark registration application.

Although a mark may be merely descriptive, which is to say, although it merely describes the product or service the mark represents to consumers, a trademark which has acquired distinctiveness will still be allowed registration on the USPTO’s Principal Register.

An example of a merely descriptive mark would be something like the name “Detroit Hammer Company” for a company in the Detroit area selling—you guessed it—hammers, in association with actual hammers (as opposed to, say, wearing apparel with the Detroit Hammer Company logo on it).

However, what if that company has been around for 80 years and its hand-crafted hammers and tools have become renown throughout the United States for their excellent quality and distinctive handle shape and design?

What if a shopper walking through a Home Depot or Ace Hardware store anywhere in the U.S. were likely to spot a Detroit Hammer Company tool hanging on a rack was likely to instantly think, “Oh, that’s one of those Detroit Hammer Company hammers …”

This would be a case where an otherwise un-registrable, merely descriptive trademark has acquired the distinctiveness necessary for Federal trademark registration.

When faced with an Office Action refusal of its trademark application, the Detroit Hammer Company, in our example, would be able to respond to the Office Action with evidence necessary to establish that its proposed mark (its name) has acquired the necessary distinctiveness or secondary meaning in the minds of consumers necessary for registration.

Otherwise, a primary requirement of trademark registration is that a mark be sufficiently unique to identify the mark’s owner as the source of the product or service with which it is identified.

A trademark which is merely descriptive and is not proven to have secondary meaning will otherwise be refused registration entirely or allowed registration only on the Supplemental Register.

The essence of the acquired distinctiveness or secondary meaning argument is that the trademark has come, over time, to represent not only the product or service itself but also its source.

In our example, that Home Depot Shopper, spotting a hammer on a rack, may be somewhere near Los Angeles—yet he recognizes that the hammer was produced by the famous company in the New Center area of Detroit, Michigan.

That is the secondary meaning of Detroit Hammer Company.  

What Evidence Can be Used to Prove Acquired Distinctiveness?

Whether or not a descriptive trademark has acquired distinctiveness is a question of fact.

That is, the Director of the USPTO must determine, based on evidence provided, whether or not actual facts support a claim of acquired distinctiveness.

Mere legal arguments will not suffice.

There are 3 different types of evidence that can be proffered to support a claim of acquired distinctiveness:

  1. Prior Trademark Registrations
  2. Consistent and Exclusive Use for 5 Years
  3. Other Evidence.

Prior, active trademark registrations on the Principal Register that are sufficiently similar to the trademark registration application at issue may provide a basis for a successful claim of acquired distinctiveness.

Thus, if the Detroit Hammer Company had successfully registered other trademarks that were very similar to “Detroit Hammer Company” at intervals over the past 8 decades which were still being used commercially, it may succeed with its claim.

Likewise, consistent use of the mark for 5 years prior to the date of the trademark registration application’s filing will also be good evidence—if that use was exclusive.

If there are other tool manufacturers in Detroit also using the same or a similar mark, this will be problematic for the Detroit Hammer Company in our example.

Otherwise, its 80-year history provides a pretty good track record of use—much more than the 5 year minimum required.

Finally, other pertinent evidence of acquired distinctiveness may be proffered.

This can mean a variety of things, but verified statements and depositions or other evidence demonstrating the duration of the use of the mark, the extent of the use, the nature of the use, the applicant’s advertising expenditure in connection with the mark, actual examples of advertisements, customer or public statements, and so forth.

Whatever evidence is proffered, the burden of proving acquired distinctiveness is on the applicant.

The descriptiveness a mark is, the more evidence will be required.

Trademark Registration and Claims of Acquired Distinctiveness: The Bottom Line

The bottom line is that responding to a merely descriptive Office Action with the defense of acquired distinctiveness requires the assistance of a knowledgeable U.S. trademark attorney.

A discount online trademark registration “service” or online form-filling service will not be able to offer legal advice, discuss required evidence, appear before the USPTO or the Trademark Trial and Appeals Board (TTAB) or offer legal arguments.

Only a U.S.-licensed attorney can assist you if you are in the position of the making the argument that your mark has acquired a secondary meaning.

If you are considering filing a U.S. trademark registration application or you have filed one on your own and now require legal assistance with a USPTO Office Action refusal, contact us to discuss your options.

The Hilla Trademark Law Firm is located in Metro Detroit but represents clients in U.S. trademark matters across the U.S. and beyond. We offer virtual consultations and friendly customer service.

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