An acquired distinctiveness trademark occurs when an unregistered mark gains distinctiveness; it develops into a trademark when the public associates it with a particular set of services and goods. This typically occurs as a result of considerable advertising and widespread commercial use.

What Is the Function of a Trademark?

For a trademark to work, a word, logo, symbol, name, or other mark must have the capability to identify the source of the service or product and differentiate it from other brands. Trademarks can be categorized in three different ways:

  • Inherently distinctive.
  • Acquired distinctive.
  • Have no distinctiveness.

Inherently Distinctive Mark

When marks are inherently distinctive, they become eligible for immediate registration on the Principal Register. As the term insinuates, an inherently distinctive mark is unique. In fact, the more unusual the mark, typically, the greater the awareness is in the minds of consumers. Descriptive marks can be broken down into two categories:

  • Merely descriptive
    • A situation where the trademark describes the goods or services.
  • Geographically descriptive
    • A situation where the trademark describes the origin or location of goods or services.

For example, a merely descriptive mark would be "PIZZA" for a restaurant that serves pizza.

What Is Acquired Distinctiveness?

When a company has gained recognition for their goods and services by using a descriptive trademark for over five years, this is referred to as acquired distinctiveness. According to the United States Patent and Trademark Office (USPTO), a common reason that a trademark submission gets denied for the Principal Register is that it is not deemed inherently distinctive. This means the trademark lacks secondary meaning or acquired distinctiveness.

The USPTO's Principal Register is limited to marks that have acquired distinctiveness or are inherently distinctive. Trademarks that lack acquired distinctiveness, are not inherently distinctive, or are merely descriptive of services and goods can only be placed on the Supplemental Register.

How to Prove a Trademark Is Distinctive

In order to prove that a trademark has acquired distinctiveness, an applicant must submit three general types of evidence to the USPTO. These include the following:

  • Actual evidence of distinctiveness.
  • Use of a trademark for five years in the market as proof as distinctiveness.
  • Prior registrations as proof of distinctiveness.

There are a few ways that a trademark owner may offer proof of distinctiveness. First, an applicant can demonstrate proof of distinctiveness through verification of previous registrations of the identical trademark on the Principal Register. It is important to note that the USPTO may request supplemental evidence of mark distinctiveness. Next, assess if the services or goods named in your new form are comparable to the services or goods identified in the previous registration.

What are the Different Forms of Actual Confirmation of Acquired Distinctiveness?

Actual confirmation of acquired distinctiveness may be submissions of depositions, declarations (according to 37 C.F.R. §2.20), affidavits, or other forms of documentation. The purpose of actual evidence is to prove the duration, extent, and reason of use of the trademark. Providing examples of actual evidence will help trademark applicants supply the appropriate evidence to prove acquired distinctiveness. The following are applicable examples of actual evidence:

  • An affidavit supplied from the company's marketing staff verifying marketing costs and expenses.
  • A deposition from the company president confirming high sales numbers along with continuous and exclusive use of the trademark.
  • A declaration from an employee verifying the number of years the mark was associated with the services or goods and the advertising methods used.
  • Survey evidence.
  • Market research.
  • Consumer feedback studies.
  • Affidavits and declarations which demonstrate consumer awareness of the mark through data collection.

How Can Acquired Distinctiveness be Achieved?

Acquired distinctiveness may be accomplished in different ways:

  • Continuous and exclusive usage that exceeds five or more years along with a declaration made and verified by the claimant.
  • A claim of ownership of one or more prior registrations on the Principal Register for the same mark for services or goods that are related or are the same as those named in the pending application.
  • Actual proof of acquired distinctiveness.

Remember, it's useful and necessary to show acquired distinctiveness based on “actual evidence.” The evidence may be:

  • Advertising expenses.
  • Declarations from consumer or others in the industry.
  • Evidence related to the reach and amount of advertising.
  • Media coverage.
  • Surveys.
  • The use and length of the mark.

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