TMEP 1212.05(d): Form of the Proof of Five Years’ Use

This is the October 2015 Edition of the TMEP

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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. The following is the suggested format for a claim for a trademark or service mark, for a certification mark, for a collective membership mark, and for a collective trademark or collective service mark, based on 37 C.F.R. §2.41(a)(2), (b)(2), and (c)(2).

For a trademark or service mark, the claim of distinctiveness should read as follows, if accurate:

The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

See 37 C.F.R. §2.41(a)(2).

For a certification mark, the claim of distinctiveness should read as follows, if accurate:

The mark has become distinctive of the certified goods/services through the authorized users' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

See 37 C.F.R. §2.41(d)(2).

For a collective membership mark, the claim of distinctiveness should read as follows, if accurate:

The mark has become distinctive of indicating membership in the collective membership organization through the members' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

See 37 C.F.R. §2.41(c)(2).

For a collective trademark or collective service mark, the claim of distinctiveness should read as follows, if accurate:

The mark has become distinctive of the goods/services through the applicant's members' substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

See 37 C.F.R. §2.41(b)(2).

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(a)(2), (b)(2), (c)(2), (d)(2). The affidavit or declaration can be signed by a person properly authorized to sign on behalf of applicant under 37 C.F.R. §2.193(e)(1). See TMEP §611.03(a).

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 of the mark 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 the U.S. Congress. See Blanchard & Co. v. Charles Gilman & Son, Inc., 239 F. Supp. 827, 145 USPQ 62 (D. Mass. 1965), aff’d, 353 F.2d 400, 147 USPQ 263 (1st Cir. 1965).
  • (4) The use of the mark must cover the five years immediately 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 must contain a reference to distinctiveness with respect to the applicant’s goods, services, or membership in the collective membership organization because the distinctiveness created by the five years’ use must relate to the goods/services/collective membership organization specified in the application. If there is doubt that the distinctiveness pertains to all or any of the goods/services/classes specified in the application, the examining attorney must inquire regarding that issue. While a clarifying response does not have to be verified, a substitute statement regarding acquired distinctiveness must be verified, i.e., supported by an affidavit or a declaration under 37 C.F.R. §2.20, signed by the applicant.