Introduction
Business enterprises often prefer to adopt trademarks that describe the company’s goods or services because they require less of an investment to develop the brand and educate the target consumer. This is in contrast to trademark counsel’s advice to select marks that have no meaning or whose meaning has no relationship to the goods or services. The reason for this advice is that the ability of a trademark to fulfill its function of identifying the source of goods or services is measured along a spectrum or continuum of distinctiveness, with marks that describe the goods or services or some characteristic thereof considered weak in their ability to serve as exclusive source-identifiers. On the other hand, marks that are intrinsically capable of this function – marks that are “inherently distinctive” – are considered strong. Terms that both lack inherent distinctiveness and are considered incapable of ever becoming distinctive cannot serve as trademarks. If the business insists on adopting a mark that merely describes a characteristic of the goods or services, its ability to obtain a U.S. registration for the mark (as well as registrations in other countries) may depend on the ability to demonstrate that the mark has obtained secondary meaning in the minds of consumers, i.e., that it has “acquired distinctiveness.”
Section 2(f) of the Lanham Act provides that “nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.”1 A 2(f) claim may be made at the time of filing or, more typically, during prosecution of the application. The simplest way to make such a claim is by submitting a declaration stating that the applicant or its licensee(s) has used the mark continuously and exclusively for a period of five or more years. However, this writer has witnessed increased scrutiny by examining attorneys in the PTO, who often require additional evidence in the form of, inter alia, advertising expenditures, sales revenues, examples of advertising and marketing materials, affidavits from relevant consumers attesting to their understanding of the term(s) as a source identifier, and consumer surveys.
The need to show acquired distinctiveness in the United States is not limited to marks deemed merely descriptive of the goods or services. Other marks that may be considered to lack inherent distinctiveness may be registered if acquired distinctiveness is demonstrated. Examples include marks that are refused as “primarily merely a surname,” “merely ornamental,” “deceptively misdescriptive,” or “primarily geographically descriptive”. All product packaging and some product design trade dress applications are considered to lack inherent distinctiveness and to require a successful claim of acquired distinctiveness to be registered. Color, sound, and other non-traditional marks also usually require a showing of acquired distinctiveness. In addition, acquired distinctiveness can be asserted in part to overcome a requirement to disclaim an assertedly non-distinctive element of a mark. On the other hand, marks that are deemed functional, deceptive, primarily geographically descriptive, deceptively misdescriptive, purely ornamental, generic, or otherwise fail to function as a trademark cannot be registered even with a claim of acquired distinctiveness because they are considered incapable of obtaining secondary meaning.
Apart from business pressures to adopt descriptive marks, the popularity of registering trade dress and non-traditional trademarks in the United States appears to be growing, and this may be partly responsible for the recent reemergence of interest in the concept of secondary meaning.
This article will first address considerations leading up to the filing of a U.S. trademark application for a mark or portion thereof that may lack inherent distinctiveness. It then discusses the ways in which acquired distinctiveness may be shown during prosecution.
Pre-Filing Considerations
When a proposed mark may lack sufficient distinctiveness to be registered in the United States, several considerations should be raised before filing the application. The benefits of considering these issues early are that the trademark counsel can manage the applicant’s expectations about the chances of success and costs, while the applicant can begin to build its case in support of a claim of acquired distinctiveness.
One consideration is where along the spectrum of distinctiveness the proposed mark falls. If the mark may be generic or highly descriptive, the applicant should be prepared for the possibility of substantial additional costs associated with efforts to obtain a registration as well as the heightened risk that the application will fail. If the mark may be descriptive of a characteristic of the goods or services, but there is a reasonable argument that target consumers will use some imagination, thought, or perception to recognize what the mark conveys (i.e., that the mark is suggestive rather than merely descriptive), there may still be additional costs, but the chances of success will be improved. Nonetheless, an understanding of the applicant’s budgetary constraints and the importance of the proposed mark to the business can help to determine how much effort to put into trying to register a potentially descriptive mark, depending on where along the spectrum of distinctiveness it is likely to fall.
The form of the mark also should be considered. While refusal of registration may be avoided by the inclusion of an additional distinctive element, such as a previously registered term or a graphic logo, if the term will be used with that additional element, the descriptive component will likely be the subject of a disclaimer requirement, and a claim of acquired distinctiveness in part still would be needed to overcome that requirement. If the applicant is not concerned about claiming exclusive rights to the potentially descriptive term, compliance with the disclaimer requirement may be a feasible option. Moreover, a registration even with the descriptive term disclaimed could be helpful in blocking subsequent third-party applications comprising the term or deterring subsequent third-party uses, which may ultimately help maintain exclusivity. However, as discussed further below, attorneys should advise clients on the possible effect of the disclaimer on future claims of exclusive rights in the descriptive term.
Another consideration is whether and for how long the applicant’s mark has already been used in U.S. commerce. If, at the time of filing, the mark has been used for, say, a decade or more, and this is reflected in the claim of first use in the application, the examining attorney may be predisposed to consider that the mark has obtained secondary meaning and to accept an acquired distinctiveness claim based solely on a declaration of continuous and exclusive use over that period. Use for only five years may be enough to support registration under 2(f), but the examining attorney may require more evidence than just a declaration. Where there has been use for a shorter period, one can consider the approximate timing of the various steps in examination to calculate whether five years of continuous and exclusive use may be reached at some point during the prosecution of the application. In most cases where there has been use, and the mark is capable of acquiring distinctiveness, even if a 2(f) claim is not permissible or accepted, the applicant has the option of seeking registration on the Supplemental Register, which is reserved for marks that are capable of becoming distinctive through use.
A more limited set of benefits arises from registration on the Supplemental Register, but it still can be used to prevent third parties from registering and using similar marks for similar goods or services. If there is no use at the time of filing, the Supplemental Register may only be available under limited circumstances (discussed below), and a claim of acquired distinctiveness also may not be feasible without a very significant investment in advertising and other evidence collected after the use commences. While registration on the Supplemental Register is possible in the case of applications based on foreign registrations, this would not be an option in the case of an...
