What is the Section 2(f) or Principal 2(f) Register for Trademarks?
Section 2(f) Trademarks are not registrable without providing proof of widespread recognition or long and continuous use.
The Principal Register Section 2(f) Register is a trademark designation managed by the trademark office for marks that are generally not protectable as trademarks, but have acquired trademark protection eligibility due to widespread public recognition as a brand and / or long and continuous use.
A great example is the trademark for “Philadelphia” Cream Cheese. Philadelphia – describing a city or location – can’t function as a trademark because it’s geographically descriptive. But, because of the famous, widespread, and long exclusive use of the name, it attained acquired distinctiveness by the public as a particular source of goods, and is therefore protectable on the Principal Register under Section 2(f).
This type of trademark right is known as a trademark established by acquired distinctiveness or secondary meaning. Secondary Meaning is just another way of describing Acquired Distinctiveness.
If you are reading this, you are facing a office action rejecting your trademark under Section 2(e) of the Trademark Act for being merely descriptive or geographically descriptive. Or, you have a distinctiveness rejection for a shape, color, or trade dress mark. Or, you may own a trademark registration that is registered on the Supplemental Trademark Register.
Generally, there are 2 ways to overcome a descriptiveness / distinctiveness rejection. One is to make a Principal Register Section 2(f) claim of acquired distinctiveness. The other is to amend the application to the Supplemental Register. Both options can get you a trademark registration, but from a legal protection standpoint, one option is highly preferable over the other.
Basics: Principal Register / Principal Section 2(f) vs. Supplemental Register
A principal trademark registration carries with it the legal presumption that the trademark is valid and enforceable. Courts and internet service providers such as Amazon will recognize the Principal Registration as proof of ownership when handling a dispute about trademark rights. A Supplemental trademark registration does not carry the same weight. Visit our Supplemental Trademark Registration post for more.
Principal Register Trademarks Must be “Inherently Distinctive” or Have “Acquired Distinctiveness”
In order to obtain the legal benefits of a Principal Trademark Registration, the proposed mark must be “inherently distinctive”. By inherently distinctive, we mean the trademark must not be generic or descriptive (define or describe the goods/services), and the mark must be capable of identifying a single source of goods or services.
The Section 2(f) or Principal 2(f) Register Is for Marks that Have Attained Acquired Distinctiveness
If the name is not inherently distinctive it can register on the Principal Register under Section 2(f) with a showing of “Acquired Distinctiveness“. That is, the applicant can show the consuming public understands the name to identify the owner as the single source of the goods/services.
A good example is Philadelphia Cream Cheese. Read here for more about geographically descriptive trademarks on the Section 2(f) Principal Register.
How to Claim Acquired Distinctiveness under Section 2(f)?
The next type of evidence is Five Years’ Use. This is a verified statement that the mark has become distinctive of the applicant’s goods or services. This acquired distinctiveness is shown by the applicant’s continual, exclusive, and substantial use of the mark in commerce for at least five years.
The last category is other evidence. This is a catchall category that includes other appropriate evidence of acquired distinctiveness.
There is a slight difference in applying these three types of evidence to collective marks. Collective marks and certification marks. The reason behind the difference is because of the different functions and purposes of collective and certification marks. Another reason behind the modified application is that someone, other than the applicant, uses the mark.
Acquired Distinctiveness for Collective Marks.
Under prior registration, like above, this is where a claim of ownership of one or more active prior registrations of the same mark for goods and/or services that are similar to what is pending application. Under a collective mark, goods, services, or nature of the collective membership organization that is sufficiently similar to those identified in the pending application, for a collective mark. This collective mark can include, collective trademarks, collective service marks and collective membership marks, or certification marks.
Under the Five Years’ Use, there must be a verified statement that the mark has become distinctive of the members’ goods or services. Under Collective marks, this statement must indicate the membership in the applicant’s collective membership organization. This is demonstrated by the members’ substantial, exclusive, and continuous use of the mark in commerce for the five years before the date of the claimed distinctiveness. For a certification mark, evidence must demonstrate that the certified goods or services are substantially exclusive and continuous used by authorized users in commerce for the five years before the date of the claimed distinctiveness is made.
Lastly, Other Evidence can be applied to collective marks. This includes other appropriate evidence of acquired distinctiveness.
Disclaimer: This information is for educational purposes, and is not intended to be legal advice. Each case turns on its own facts. Please consult with an experienced trademark attorney.
EsquireTrademarks.com – Online Trademark Attorneys – What We Do:
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