1212.03 Evidence of Distinctiveness under §2(f)
37 C.F.R. §2.41
Proof of distinctiveness under section 2(f).
For a trademark or service mark.
Ownership of prior registration(s). In
appropriate cases, ownership of one or more active prior registrations
on the Principal Register or under the Trademark Act of 1905 of the same
mark may be accepted as prima facie evidence of distinctiveness if the
goods or services are sufficiently similar to the goods or services in
the application; however, further evidence may be required.
Five years substantially exclusive and
continuous use in commerce. In appropriate cases, if a trademark or
service mark is said to have 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, a showing by way of
verified statements in the application may be accepted as prima facie
evidence of distinctiveness; however, further evidence may be
Other evidence. In appropriate cases,
where the applicant claims that a mark has become distinctive in
commerce of the applicant’s goods or services, the applicant may, in
support of registrability, submit with the application, or in response
to a request for evidence or to a refusal to register, verified
statements, depositions, or other appropriate evidence showing duration,
extent, and nature of the use in commerce and advertising expenditures
in connection therewith (identifying types of media and attaching
typical advertisements), and verified statements, letters or statements
from the trade or public, or both, or other appropriate evidence of
See also 37 C.F.R. §2.41(b)-(d) (for collective and certification marks).
“To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982).