What the 2(f)?: Demonstrating Acquired Distinctiveness
Jeffrey Turben | December 24, 2020
Before a trademark is registered with the USPTO on the Principal Register, the applicant must demonstrate that the trademark is distinct. As you probably know, all trademarks fall along a spectrum of distinctiveness:
Fanciful – An entirely invented mark that is inherently distinctive. Ex. Xerox for printers
Arbitrary – A mark consisting of a known word that is thoroughly unrelated to the product or service being offered. An arbitrary mark is inherently distinctive. Ex. Camel for cigarettes
Suggestive – A mark that indicates the nature, quality or characteristic of the products or services, but does not describe this characteristic; it requires imagination on the part of the consumer to identify. A suggestive mark may be inherently distinctive. Ex. Coppertone for suntan oil
Descriptive – A term used in connection with products or services and directly related to that meaning. This type of mark is not inherently distinctive but may acquire distinctiveness if it attains secondary meaning. Ex. Sweettarts for candy
Generic – The common name for the products or services in connection with which it is used. Generic terms are not distinctive and cannot function as trademarks. Ex. Headache Medicine for medication
Marks that are inherently distinctive are registrable on the Principal Register: these trademarks are considered prima facie registrable. Descriptive marks (for example those that require a disclaimer or that have been refused for being descriptive) are typically relegated to the Supplemental Register. However, if a mark has been used exclusively and continuously for at least five years and has come to obtain secondary meaning in the market, you can perhaps argue that it has acquired distinctiveness—it can be registered on the Principal Register. This tenant is governed by 15 U.S.C. § 1052(f) (hereafter, §2(f)). To acquire distinctiveness, the mark must obtain secondary meaning in the market, which means that the mark has become well-known enough that it serves as a source-indicator to consumers.
If you file a §2(f) acquired distinctiveness claim and the Examining Attorney determines that the mark is still not distinctive, they will issue an Office Action refusing the application for not satisfying §2(f). It can be challenging to overcome such a refusal, but with the proper evidence and advocacy, it is possible to successfully overcome the office action and register the mark on the Principal Register. Additionally, if proving acquired distinctiveness proves futile, you may still be able to get it listed on the Supplemental Register to afford it some protection. Read more about the differences between the Principal and Supplemental Registers here.
Demonstrating Acquired Distinctiveness
A wide variety of information, including both circumstantial and direct evidence, may be used to demonstrate that an applied-for mark has acquired distinctiveness within the meaning of §2(f). See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1583 (Fed. Cir. 1988). Any evidence, including “verified statements, depositions and other appropriate evidence,” that shows or speaks to the “duration, extent and nature of use” of the mark in commerce is fair game. Id. Advertising and marketing expenditures, consumer data, and media coverage may also be used to demonstrate that an applied-for mark has acquired distinctiveness. Id.
An important note is that the more descriptive the applied-for mark, the higher the burden of proving acquired distinctiveness under §2(f) becomes. Accordingly, the amount and types of evidence to include in a §2(f) response will necessarily vary. TMEP §1212.06.
Although the USPTO assesses acquired distinctiveness on a case-by-case basis, successful §2(f) claims of acquired distinctiveness typically include:
Sales figures demonstrating the popularity of the brand, and, in particular, sales figures that demonstrate growth as a result of marketing campaigns that leverage the applied-for mark – i.e. the applied-for mark is being used as a source indicator, and is not merely decorative, informational, or otherwise fulfilling some other business or notice function.
Advertising expenditures and marketing efforts, including granular data—like number of impressions, conversions, etc.—which, ideally, link campaigns emphasizing the source of a product or service to the applied-for mark. “Look for” ads are helpful here. For example, “Look for Sudsy Soap in the beauty section.”
Examples of unsolicited media coverage that mention and especially that praise the products or services as related to the applied-for mark.
Historical records indicating that the applied-for mark has been used in commerce for more than 5 years. This condition is necessary, but use in commerce alone is not sufficient to establish acquired distinctiveness under §2(f).
Additional factors that contribute to a mark’s distinctiveness may include:
Social media statistics, like the number of followers and the level of engagement that the applicant is seeing from its followers and customers on the platform
Daily, weekly, or monthly active users (for software companies)
Customer reviews on eCommerce platforms (for consumer-packaged goods companies) or customer testimonials
Search engine optimization data
The existence of third-party produced accessories
The popularity of merchandise and other corporate swag, which could tend to demonstrate a distinctiveness of the applied-for mark,
in and of itself, apart from the actual primary product or service.
There are many ways to successfully claim acquired distinctiveness under §2(f), but it cannot be stressed enough that the “ultimate test in determining whether a designation has acquired distinctiveness is the applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source.” TMEP §1212.06(b). In other words, applicants must prove that consumers believe that the applied-for mark is an indicator of source, not the product or service itself.
An Example of a Successful §2(f) Response
The Telephonics Corporation attempted to register, in part, the mark “TELEPHONICS,” but the application was initially refused. In U.S.P.T.O., Office Action Regarding Trademark Application Serial No. 86887044, dated Oct. 10, 2016, the applicant initially submitted claims of continuous and substantial use, screenshots from its website exhibiting extensive media coverage and allegations of extensive use in commerce for over the past 80 years. Id. The Examining Attorney initially found that the evidentiary record did not support a finding of acquired distinctiveness under §2(f) and that the applied-for mark was highly descriptive of applicant’s products or services. Id. They further suggested that the applicant submit evidence relating to the product’s sales, advertising, and marketing, as well as information relating to its customers’ behavior. Id.
In response, applicant was able to overcome the refusal by submitting evidence that incorporated the Examining Attorney’s suggestions and that contained (1) examples of advertisements dating back to the 1930s, (2) information regarding the applicant’s advertising expenditures, (3) evidence, including SEO data, that connected the applicant’s efforts to promote the applied-for mark as a trademark and consumers’ ability to conceive of the applied-for mark as such, and (4) examples of unsolicited media coverage in The New York Times, Newsday, and The Brooklyn Daily Eagle. This additional evidence, in combination with that evidence already on the record, was enough to demonstrate that the applied-for mark had acquired a secondary meaning among consumers and that said meaning helped consumers differentiate the applicant’s products and services. See generally Response to Office Action Regarding Trademark Application Serial No. 86887044, dated April 26, 2017. As a result, the applicant’s mark was accepted to the Principal Register.
Why a §2(f) Response May Be Rejected and What to Do
The Examining Attorney will reject acquired distinctiveness claims when the applicant has not provided enough evidence to demonstrate that the public perceives the mark as source-identifying. Because a finding of acquired distinctiveness under §2(f) is a question of fact, refusals will almost always be based on the evidentiary record.
Claims of acquired distinctiveness are often refused on the grounds that the advertising or marketing evidence doesn’t properly incorporate the applied-for mark as an indicator of origin or that it doesn’t sufficiently create a secondary meaning in the minds of the relevant consumer. In In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008), for instance, the TTAB refused the applicant’s claim of acquired distinctiveness for a product feature, namely, a “three fingers” design on the earpiece frames of sunglasses and spectacles. The TTAB claimed that the way in which the applied-for mark was positioned in the submitted marketing and advertising evidence did not show the applied-for mark as a trademark. Specifically, the TTAB noted that while the design was visible in print magazine ads and on internet web pages, there were no references to the earpiece design.
Similarly, verified statements from customers may not fully prove acquired distinctiveness. Applied-for marks may be refused because these statements do not actually capture how the average or relevant consumer would perceive the applied-for mark or that, more simply, the sample of persons offering said statements does not represent the average and relevant consumer as a result of bias. In In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988), for example, the TTAB found that “Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings.” Thus, the sources of statements matter.
Finally, while survey data, consumer insights, and market research are often very effective ways of proving acquired distinctiveness, these types of evidence can be faulty or not robust enough to survive scrutiny. In particular, claims may be rejected because a survey may not have sufficient quality controls, may not ask the right questions, or may have repurposed marketing research materials. In In re Steelbuilding.com, 415 F.3d at 1300, the TTAB characterized the administration of a survey as inadequate, stating that there were no protections in place to prevent consumers from responding to the survey more than once, and the record did not include the overall number of participants. Similarly, in Gen. Foods Corp. v. Ralston Purina Co., 220 USPQ 990, 994 n.7 (TTAB 1984) the panel wrote that “[W]here … [reports of market research and studies of consumer behavior] have been conducted for marketing reasons rather than directly to assist in resolving the issues in proceedings before us, their value will almost always depend upon interpretations of their significance by witnesses or other evidence.” Soliciting information from biased sources or inadequately ensuring survey accuracy may hinder an otherwise defensible claim of acquired distinctiveness from proceeding.
An example of where an applicant was unsuccessful in overcoming a §2(f) refusal even after providing a record of evidence purportedly showing acquired distinctiveness is In re Los Angeles Tourism & Convention Board, 2017 TTAB LEXIS 393 (TTAB Sep. 30, 2017). In this case, the TTAB held that a stylized logo consisting of text that read “Los Angeles” had not acquired distinctiveness under §2(f). Here, the TTAB, applying In re Sadoru Group Ltd., asked if the text and design features that made up the applied-for mark had created an impression on the purchaser separate and apart from the impression of the words themselves. The applicant had commissioned the creation of the font used in the applied-for mark, but these stylistic attributes did not obviate the mere descriptiveness of the applied-for mark. Despite evidence of substantial web traffic, averaging over 1 million visitors a day, policing efforts, prominent displays of the applied-for mark on advertisements, and gross sales measured in the millions, the applicant’s claim was rejected. The TTAB highlighted as an additional reason for refusal a lack of “look for” advertising, and, more generally, a lack of evidence that demonstrated the applicant’s efforts to actually create an association between the applied-for mark and the applicant’s products and services in the mind of the relevant consumer. Summarizing its arguments, the court concluded that the “advertising materials provided by Applicant simply demonstrate that Applicant is engaged in promotional efforts to bring travelers to the Los Angeles area by using the geographical term LOS ANGELES as a draw.” Id. Finally, it was fatal to the application that the applicant failed to produce evidence that consumers separately perceive the stylized font as a means of differentiation. Such a gap in the evidence, the TTAB held, suggested that consumers perceive the applied-for mark as merely descriptive wording and do not associate such font exclusively with the applicant.
While evidentiary issues are the most likely culprit with respect to a §2(f) office action, there are additional issues that may arise in §2(f) claims. For example, in In re Boston Beer Co. 198 F.3d 1370 (1999), an applied-for mark consisting of the phrase “The Best Beer in America” was found to not have acquired distinctiveness under §2(f), despite the evidentiary record demonstrating extensive advertising and promotion of the applied-for mark. At the time of litigation, the applicant had used the applied-for mark extensively in advertising and promotion for about 14 years. There was also evidence of media coverage discussing the applied-for mark in connection with the applicant’s products. However, it was ultimately held that the applied-for mark was so inherently laudatory and descriptive as to prevent registration under §2(f), suggesting there are marks that are beyond the reach of protectability under §2(f).
Notes of Caution when Demonstrating Distinctiveness
It is important to note that any evidence submitted as a part of a §2(f) claim becomes part of the public record, so be careful about providing any information that may be sensitive (for example, information that may expose competitive advantage, product development, valuation, etc.)
Another important consideration when claiming acquired distinctiveness under §2(f) is that you are effectively conceding that the applied-for mark is not inherently distinctive. If the trademark were to ever raise an infringement claim, the initial §2(f) claim during the application process could complicate or inhibit maximum enforcement rights. TMEP §1212.02(b).
Like other areas of intellectual property and trademark law, §2(f) claims are nuanced, and, more than any other factor, they require effective storytelling and advocacy to meet the burden of proof and ultimately achieve registration. Working closely with brand owners to ensure that their brand’s narrative is properly told is critical. With a proper narrative, appropriate and tailored data points and vigorous advocacy, §2(f) claims don’t necessarily have to leave you muttering “what the 2(f);” they can actually provide an important opportunity to refine your client’s brand and endow it with a more robust identity.