Westchester Women's Bar Association

Five Years of Use Can Demonstrate Distinctiveness

If a mark is not inherently distinctive, you may be able to overcome a refusal for descriptiveness under §2(e)(1) of the Trademark Act by showing five years of use of the mark in commerce. Examining Attorneys will refuse marks initially under§2(e)(1) even if it appears that the mark is generic. However, if there is substantial evidence that the mark is generic a statement that it appears to be the generic name for the goods should be included along with the refusal for merely descriptiveness. Examining Attorneys strategically assert refusals that are the easiest to prove. Since it is difficult to establish that a mark is generic, often a descriptiveness refusal is issued.

Marks that are merely descriptive may be registered on the Principal Register if a proper showing of acquired distinctiveness is made under §2(f) of the Trademark Act. See our webpage entitled, What is Acquired Distinctiveness And Secondary Meaning, to review the general types of evidence an applicant can submit to overcome a descriptiveness refusal. This page will focus on prior use evidence as a means to overcome a 2(e)(1) refusal. It should be noted that the kind and amount of evidence necessary to establish that a mark has acquired distinctiveness (secondary meaning) depends on the nature of the trademark (if it is highly suggestive or if it is highly descriptive) in relation to the goods and services. For example, if the product design sought to be registered was ornamental then an unusually heavy burden exists to prove secondary meaning.

Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f) provides that the Examining Attorney in appropriate cases may accept a declaration of use of the mark in commerce for five years. The language specifically states: "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 acceptable as prima facie evidence of acquired distinctiveness. Initially, the five-year period of use had to precede the filing date of the trademark application. The Trademark Act was modified to allow any five-year claim submitted after November 16, 1989 to be eligible for proving acquired distinctiveness even if the application was filed prior to this date. At its option, the USPTO may require additional evidence in addition to the five-year claim.

Generally speaking often if the mark is a surname the statement of five years use will be adequate to prove secondary meaning. On the other hand, the five-year statement will be deemed insufficient if the mark is highly descriptive or misdescriptive. The USPTO will frequently look to dictionary definitions and use by competitors or third parties to determine if the mark has acquired distinctiveness. If the matter is not inherently distinctive, then five years of use will not be accepted. Examples would include nondistinctive product design, ornamentation, color of a product and sounds.

This five year period of use of the mark in commerce does not have to be exclusive, but must be "substantially exclusive". This permits uses that are infringing or inconsequential. However, numerous third party uses will weaken or nullify a claim of acquired distinctiveness. In addition to substantially exclusive use, the use must also be continuous without a period of nonuse. The use must be "substantially continuous". Of course, there are exceptions. For example, if there are goods that are seasonal such as Christmas trees or certain fruit, the mark may be able to have acquired distinctiveness even if it is not in use for eight months of the year. Moreover, there are marks that may only be able to claim acquired distinctiveness for a portion of the trademark. See our web page entitled, Claiming Acquired Distinctiveness In Part, for details on this topic. If you have questions regarding descriptive marks or acquired distinctiveness, please feel free to contact our office for a courtesy consultation.

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