TMEP 1212: Acquired Distinctiveness or Secondary Meaning

This is the October 2015 Edition of the TMEP

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1212    Acquired Distinctiveness or Secondary Meaning

15 U.S.C. §1052(f)  

Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act.

If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).

Within the context of the Trademark Act, §2(f) may be described as follows:

[U]nlike the first five sections of 15 U.S.C. §1052 which define the grounds upon which a trademark registration is to be refused, Section 2(f) serves as an exception to a rejection under the provisions of one of the other sections, Section 2(e) (citation omitted). Section 2(f) permits registration of marks that, despite not qualifying for registration in light of Section 2(e), have nevertheless “become distinctive of the applicant’s goods in commerce.” Thus, “Section 2(f) is not a provision on which registration can be refused,”... but is a provision under which an applicant has a chance to prove that he is entitled to a federal trademark registration which would otherwise be refused.

Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988), quoting In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983).

The purpose and significance of secondary meaning may be described as follows:

A term which is descriptive... may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer. 1 Nims, Unfair Competition and Trademarks at §37 (1947). This is what is known as secondary meaning.

The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer (citations omitted). This may be an anonymous producer, since consumers often buy goods without knowing the personal identity or actual name of the manufacturer.

Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972).

Three basic types of evidence may be used to establish acquired distinctiveness under §2(f) for a trademark or service mark:

  • (1) Prior Registrations: A claim of ownership of one or more active prior registrations on the Principal Register of the same mark for goods or services that are sufficiently similar to those identified in the pending application (37 C.F.R. §2.41(a)(1); see TMEP §§1212.04–1212.04(e));
  • (2) Five Years’ Use: A statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of the applicant's substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made (37 C.F.R. §2.41(a)(2); see TMEP §§1212.05–1212.05(d)); and
  • (3) Other Evidence: Other appropriate evidence of acquired distinctiveness (37 C.F.R. §2.41(a)(3); see TMEP §§1212.06–1212.06(e)(iv)).

These three basic types of evidence apply similarly to collective trademarks, collective service marks, and collective membership marks (together “collective marks”), and certification marks, with slight modifications regarding the type of evidence required due to (1) the different function and purpose of collective and certification marks and (2) the fact that these types of marks are used by someone other than the applicant. See 37 C.F.R. §2.41(b)-(d).

  • (1) Prior Registrations: A claim of ownership of one or more active prior registrations on the Principal Register of the same mark for: goods or services that are sufficiently similar to those identified in the pending application, for a collective trademark or collective service mark (37 C.F.R. §2.41(b)(1); cf. TMEP §§1212.04–1212.04(e)); goods, services, or nature of the collective membership organization that are sufficiently similar to those identified in the pending application, for a collective membership mark (37 C.F.R. §2.41(c)(1); cf. TMEP §§1212.04–1212.04(e)); and goods or services that are sufficiently similar to the goods or services certified in the pending application, for a certification mark (37 C.F.R. §2.41(d)(1)); cf. TMEP §§1212.04–1212.04(e));
  • (2) Five Years’ Use: A statement verified by the applicant that the mark has become distinctive of: the members’ goods or services by reason of the members’ substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, for a collective trademark or collective service mark (37 C.F.R. §2.41(b)(2); TMEP §1212.05(d)); indicating membership in the applicant’s collective membership organization by reason of the members’ substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, for a collective membership organization (37 C.F.R. §2.41(c)(2); TMEP §1212.05(d)); or the certified goods or services, by reason of the authorized users’ substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, for a certification mark (37 C.F.R. §2.41(d)(2); TMEP §1212.05(d)); and
  • (3) Other Evidence: Other appropriate evidence of acquired distinctiveness (37 C.F.R. §2.41(b)(3), (c)(3), (d)(3); cf. TMEP §§1212.06–1212.06(e)(iv)).

The applicant may submit one or any combination of these types of evidence, which are discussed in more detail below. Depending on the nature of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. In which case, the applicant may then submit additional other evidence of acquired distinctiveness.

The legal principles pertaining to evidence of acquired distinctiveness discussed in this section and below with respect to trademarks and service marks apply generally to collective marks and certification marks as well.