T.M.E.P. § 1212.05
Five Years of Use as Proof of Distinctiveness
Executive summary:
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1212.05 Five Years of Use as Proof of Distinctiveness
Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f), provides that "proof of substantially exclusive and continuous use" of a designation "as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made" may be accepted as prima facie evidence that the mark has acquired distinctiveness as used with the applicant's goods in commerce. See also 37 C.F.R. 2.41(b).
The Trademark Act previously required that the relevant five-year period precede the filing date of the application. The Trademark Law Revision Act of 1988, Public Law 100-667, 102 Stat. 3935, revised §2(f) of the Act to provide for a prima facie showing of acquired distinctiveness based on five years' use running up to the date the claim is made. Under the revised provision, any five-year claim submitted on or after November 16, 1989, is subject to the new time period. This applies even if the application was filed prior to that date.
Section 2(f) of the Act and 37 C.F.R. 2.41(b) state that reliance on a claim of five years' use to establish acquired distinctiveness "may" be acceptable in "appropriate cases." The Office may, at its option, require additional evidence of distinctiveness. Whether a claim of five years' use will be deemed acceptable to establish that the mark has acquired distinctiveness depends largely on the nature of the mark in relation to the specified goods or services.
The following are general guidelines regarding the statutorily suggested proof of five years' use as a method of establishing acquired distinctiveness.
1212.05(a) Sufficiency of Claim Vis-ˆ-Vis Nature of the Mark
For most surnames, the statement of five years' use will be sufficient to establish acquired distinctiveness.
The amount of evidence necessary to establish secondary meaning varies -- "the greater the degree of description a term has, the heavier the burden to prove it has attained secondary meaning." In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n. 4 (Fed. Cir. 1990); Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
Accordingly, for marks refused under §§2(e)(1) or 2(e)(2), whether the statement of five years' use is sufficient in and of itself to establish acquired distinctiveness depends on the degree to which the mark is descriptive or misdescriptive. If the mark is highly descriptive or misdescriptive of the goods or services named in the application, the statement of five years' use alone will be deemed insufficient to establish acquired distinctiveness. See In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989) (applicant's sole evidence of acquired distinctiveness, a claim of use since 1975, held insufficient to establish that the highly descriptive, if not generic, designation RADIO CONTROL BUYERS GUIDE had become distinctive of applicant's magazines); In re Gray Inc., 3 USPQ2d 1558, 1559 (TTAB 1987) ("[T]o support registration of PROTECTIVE EQUIPMENT [for burglar and fire alarms and burglar and fire alarm surveillance services] on the Principal Register a showing considerably stronger than a prima facie statement of five years' substantially exclusive use is required."). Cf. In re Synergistics Research Corp., 218 USPQ 165 (TTAB 1983) (applicant's declaration of five years' use held sufficient to support registrability under §2(f) of BALL DARTS for equipment sold as a unit for playing a target game, in view of lack of evidence that the term is highly descriptive (e.g., no dictionary evidence of any meaning of BALL DARTS and no evidence of use of the term by competitors or the public)).
For matter that does not inherently function as a mark because of its nature (e.g., nondistinctive product container shapes, overall color of a product, mere ornamentation), evidence of five years' use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods or services would be required to establish distinctiveness. See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant's fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress (white circle surrounded by blue border) for ear plugs); In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters).
1212.05(b) "Substantially Exclusive and Continuous"
The five years of use does not have to be exclusive, but may be "substantially" exclusive. This makes allowance for use by others that may be inconsequential or infringing, which does not necessarily invalidate the applicant's claim. L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 USPQ2d 1307 (Fed. Cir. 1999).
The existence of other applications to register the same mark, or other known uses of the mark, does not automatically eliminate the possibility of using this method of proof, but the examining attorney should inquire as to the nature of such use and be satisfied that it is not substantial or does not nullify the claim of distinctiveness. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403, 222 USPQ 939, 940-41 (Fed. Cir. 1984) ("When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances."); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1357-58 (TTAB 1989) ("[T]he existence of numerous third party users of a mark, even if junior, might well have a material impact on the Examiner's decision to accept a party's claim of distinctiveness."); Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) ("[L]ong and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive."); Ex parte The Kalart Co. Inc., 88 USPQ 221 (PO Ex. Ch. 1951).
The use of the mark during the five years must be continuous, without a period of "nonuse" or suspension of trade in the goods or services in connection with which the mark is used.
1212.05(c) Use "as a Mark"
The substantially exclusive and continuous use must be "as a mark." 15 U.S.C. 1052(f). See In re Craigmyle, 224 USPQ 791 (TTAB 1984) (registrability under §2(f) not established by sales over a long period of time where there was no evidence that the subject matter had been used as a mark); In re Kwik Lok Corp., 217 USPQ 1245, 1248 (TTAB 1983) (declarations as to sales volume and advertising expenditures held insufficient to establish acquired distinctiveness. "The significant missing element in appellant's case is evidence persuasive of the fact that the subject matter has been used as a mark.").
1212.05(d) Form of the Proof of Five Years' Use
If the applicant chooses to seek registration under §2(f), 15 U.S.C. 1052(f), by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness that reads as follows, if accurate:
The mark has become distinctive of the goods (or services) through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.
The claim of five years of use is generally required to be supported by an affidavit or declaration under 37 C.F.R. 2.20, signed by the applicant. See 37 C.F.R. 2.41(b). The affidavit or declaration can be signed by a person properly authorized to sign on behalf of applicant under 37 C.F.R. 2.33(a). See TMEP §804.04.
The following are guidelines regarding the form and language appropriate for a claim of five years of use:
(1) Use of the precise statutory wording is desirable, but variations may be accepted if they do not affect the essential allegations.
(2) The wording "substantially exclusive and continuous use in commerce" is essential.
(3) It must be clear from the record that the five years of use has been in commerce that may lawfully be regulated by Congress. See Blanchard & Co., Inc. v. Charles Gilman & Son, Inc., 145 USPQ 62 (D. Mass. 1965), aff'd, 353 F.2d 400, 147 USPQ 263 (1st Cir. 1965), cert. denied 383 U.S. 968, 149 USPQ 905 (1966).
(4) The use of the mark must cover the five years before the date of the statement of five years' use. Thus wording that indicates that the use referred to is before the date of the statement is essential. Its omission can only be excused if the facts in the record clearly show that the use includes the five years before the date of the statement.
(5) The affidavit or declaration should include a statement that the mark has become distinctive or that the applicant believes that the mark has become distinctive, but absence of this statement is not fatal. See TMEP §1212.07 for examples of various ways in which an applicant may assert a §2(f) claim.
(6) The affidavit or declaration should contain a reference to distinctiveness as applied to the applicant's goods or services, or to use with the applicant's goods or services, because the distinctiveness created by the five years' use must relate to the goods or services specified in the application. If there is doubt that the distinctiveness pertains to either all or any of the goods or services specified in the application, the examining attorney should inquire regarding that issue. While a clarifying response does not have to be verified, a substitute statement must be verified, i.e., supported by an affidavit or a declaration under 37 C.F.R. 2.20, signed by the applicant.