TMEP 1212.05: Five Years of Use as Proof of Distinctiveness

This is the October 2015 Edition of the TMEP

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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 in commerce with the applicant’s goods or services. See 37 C.F.R. §2.41(a)(2).

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, Pub. L. No. 100-667, 102 Stat. 3935 (1988), 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(a)(2) state that reliance on a claim of five years’ use to establish acquired distinctiveness “may” be acceptable in “appropriate cases.” The USPTO may, at its option, require additional evidence of distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (noting that the statute does not require the USPTO to accept five years’ use as prima facie evidence of acquired distinctiveness). Whether a claim of five years’ use will be deemed sufficient to establish that the mark has acquired distinctiveness depends largely on the nature of the mark in relation to the specified goods/services/classes.

The following are general guidelines regarding the statutorily suggested proof of five years’ use as a method of establishing acquired distinctiveness.