What Is Acquired Distinctiveness and Secondary Meaning?
One of the most common reasons why a trademark application may be refused is because the mark is not inherently distinctive, and it is lacking quired distinctiveness or secondary meaning. Acquired distinctiveness and secondary meaning are often used interchangeably and will be used interchangeably for the purposes of this discussion.
A term that is descriptive may acquire unique significance overtime through the trademark owner’s usage. If this occurs, then the relevant public will associate the trademark with a particular source, manufacturer, or producer. There are three generally types of evidence a trademark owner can submit to the United States Patent and Trademark Office (USPTO) to demonstrate that a trademark has acquired distinctiveness.
These categories include:
- prior registrations as proof of distinctiveness;
- five years of use of the trademark in commerce as proof of distinctiveness; and
- actual evidence of distinctiveness.
A trademark applicant can offer proof of distinctiveness through ownership of one or more prior registrations of the same mark. However, the USPTO may require additional evidence of distinctiveness. For example, if the prior registration had to disclaim the term for which the applicant is now attempting to show distinctiveness, the prior registration will not be accepted as prima facie evidence of distinctiveness. Small or minor deviations in the marks may be acceptable, but the marks must be found to be “legal equivalents.” The next step is to determine if the goods or services identified in the application are similar enough to the goods or services named in the prior registration. Lastly, the prior registration must be in full force and not expired or cancelled.
Five Years of Use
This claim of five years of sue of the mark must be substantially exclusive and continuous use. If consumers are faced with multiple independent user of the same trademark, a claim of acquired distinctiveness will not prevail. Multiple third-party users, even if junior users, will negatively impact an examiner’s determination to accept a party’s claim of distinctiveness. The five-year period can commence before the filing of the trademark application and run until the date the claim is made. If the mark is highly descriptive, the burden is heavier for proving secondary meaning. For example, the majority of surnames can submit the statement of five years use and this will be sufficient to prove secondary meaning. But if the mark consists of mere ornamentation, overall color of a product, or nondistinctive product container shapes, evidence of five years use is not sufficient to show acquired distinctiveness.
Actual evidence of acquired distinctiveness can take the form of affidavits, declarations, depositions, or other types of evidence. The objective is to demonstrate the extent, duration, and nature of the use of the mark. Examples of evidence include an affidavit from a senior marketing representative attesting to the advertising expenditures, a declaration of a company employee alleging the duration of years the mark has been used with the goods or services and the methods of advertising, or a deposition of the president of the company supporting high sales figures along with substantially exclusive and continuous use. Other persuasive evidence includes affidavits or declarations claiming consumer recognition of the mark as a source indicator, survey evidence, consumer reaction studies, and market research.
Determining whether you will be able to successfully claim that your trademark has acquired distinctiveness or secondary meaning is not always easy. Keep in mind that the primary significance of the mark in the minds of consumers, must be the source of the goods or services.
The Trademark Attorneys Los Angeles at our firm would be happy to assist you in evaluating whether the use of your trademark has resulted in acquired distinctiveness. We can be reached at 1 800-651-7301, via email at email@example.com, or through our contact form below.