An Example of a Section 2(f) Trademark Registration
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)?
1. An active trademark registration, owned by the applicant for the same mark on the Principal Register.
The Trademark Rules provide that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register or under the Act of 1905. See TMEP 1212.04
The Section 2(f) Claim is not guaranteed. The rule states that, “in appropriate cases,” ownership of existing registrations to establish acquired distinctiveness “may be accepted as sufficient prima facie evidence of distinctiveness,” but the Trademark Office may, at its option, require additional evidence of distinctiveness.
See TMEP §1212.04(b) as to what constitutes the “same mark.”
Further, TMEP §§1212.09–1212.09(b) discusses concerning §1(b) Intent to Use Trademark applications.
2. You can Claim Principal Trademark Register Section 2(f) Status by Proving Five Years Use
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. See TMEP 1212.05
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.
Section 2(f) states that reliance on a claim of five years’ use to establish acquired distinctiveness “may” be acceptable in “appropriate cases.” The Trademark Office may, at its option, require additional evidence of distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (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, or classes.
When making a Trademark Section 2(f) claim, the amount of evidence necessary to establish secondary meaning varies. “[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.”
The classification of a trademark as “highly descriptive” is an indicator that a substantial amount of evidence will be required for the trademark application to receive Principal Register Section 2(f) status. TMEP 1212.05(a)
3. Other Evidence of Distinctiveness Can be Used to get Principal Trademark Register Section 2(f) Status
The last category is other evidence. This is a catchall category that includes other appropriate evidence of acquired distinctiveness. Under Trademark Rule 2.41(a)(3), you may submit affidavits, declarations, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce that may lawfully be regulated by the U.S. Congress, advertising expenditures in connection with such use, letters, or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services. This is Discussed in TMEP 1212.06
Acquired Distinctiveness for Collective Marks.
There is a slight difference in applying these three types of evidence to collective marks 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.
Also, the Section 2(f) acquired distinctiveness claim is not always allowed by the trademark office. For instance, the Examining Attorney may refuse a Section 2(f) claim if the Examining Attorney believes the mark is highly descriptive, generic,
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.